1 / 90

Trade marks: Latest European case law

Trade marks: Latest European case law. Mireia Curell IP Attorney, Partner CURELL SUÑOL, ES President of ECTA. Index. 1) Technical Issues - Questions of procedure 2) Substantive Law - Relative grounds for refusal Likelihood of confusion

andrew
Télécharger la présentation

Trade marks: Latest European case law

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Trade marks: Latest European case law Mireia Curell IP Attorney, Partner CURELL SUÑOL, ES President of ECTA

  2. Index 1) Technical Issues - Questions of procedure 2) Substantive Law - Relative grounds for refusal Likelihood of confusion Reputation of the earlier mark - Absolute grounds for refusal Signs devoid of distinctive character Descriptive signs Signs that cannot constitute a mark

  3. Procedural issues T-191/04 MIP Metro Group v OHIM. 13.09.2006 METRO Renewal of the earlier mark

  4. Decision of the CFI The Court recalls that the purpose of an opposition procedure is to protect the identifying function of an earlier mark. It is therefore necessary that the marks in conflict be valid at the time the decision is taken. If in the course of opposition proceedings, an earlier mark has expired, the refusal of the opposed trade mark is no longer justified (paras. 32 and 33).

  5. Procedural issues LYOC Lyco-A T-32/04 Lichtwer Pharma AG v OHIM.16.11.2006 This decision applies to Article 81 (4) CTMR relating to costs.

  6. Decision of the CFI The Court annuls the Board of Appeal’s decision and considers that “ the fact that an opposition is upheld, although it deprives the parallel proceedings of their purpose, does not make it in any way possible to determine which of the parties to those parallel proceedings would have been unsuccessful. Identification of the unsuccessful party in given proceedings may be based only on the purpose and factual and legal framework of those proceedings, as defined by the parties’ claims” (para. 22)

  7. Procedural issues T-53/05 - Calavo Growers Inc. v Luis Calvo Sanz and OHIM - 16.01.2007 CALAVO Examination of opposition - form/arguments

  8. Decision of the CFI The question relates to the fact whether the OHIM could take a decision on the sole basis of the information provided within the first part of the notice of opposition, namely the marks involved and the legal basis. The answer of the Court is affirmative: the analysis of the opposition can be done on the basis of the sole comparison between the signs and the goods.

  9. Procedural issues T-317/05 Kustom Musical Amplification, Inc. v OHIM - Form of a Body Guitar. 07.02.2007 Article 73 CTMR -Reasoned decision

  10. Decision of the CFI The Court annuls the decision of the Board of Appeal since it finds that the contested decision infringed Article 73 CTMR by failing to comply with the duty to state reasons on which decisions are based and by violating the right to be heard.

  11. Procedural issues C-29/05 Kaul GmbH v Bayer and OHIM - (CFI T-164/02 - reversed) 13.03.2007 ARCOL CAPOL Belated filing of evidence

  12. Decision of the Court of Justice The Court states that the Board of Appeal erroneously interpreted Article 74. It also states that the Court of First Instance erroneously interpreted that the Board of Appeal should have taken the new elements into account as they had been filed “in due time”. The Court states that the Board of Appeal, when presented with facts and evidence which are submitted late, has a discretion as to whether or not to take account of such information when making the decision which it is called upon to give.

  13. Procedural issues LURA-FLEX T-192/04 - Flex Equipos de Descanso v Legget & Platt and OHIM - 16.07.2007 Belated filing of evidence

  14. Decision of the CFI The answer has been given by the Court of Justice in its decision of 13 March 2007 ARCOL/CAPOL: when presented with facts and evidence which are submitted late, the Board of Appeal has a discretion as to whether or not to take account of such information when making the decision which it is called upon to give.

  15. Procedural issues T-240/05 et al The Black & Decker Corporation v Atlas Copco AB and OHIM - 15.05.2007 The applicant considers that colour representations of the earlier marks submitted after the opposition deadline had expired cannot be accepted.

  16. Decision of the CFI The Court rejects this argument on the basis of Article 80 (2) which provides that «where a communication received by fax is incomplete or illegible, or where OHIM has reasonable doubts as to the accuracy of the transmission, OHIM is to inform the sender accordingly and is to invite him, within a period to be specified by OHIM, to retransmit the original by fax or to submit the original».

  17. Substantive Law:No likelihood of confusion T-153/03 Inex SA v OHIM-Robert Wiseman & Sons Ltd. 13.06.2006

  18. Decision of the CFI The CFI upheldthe Board of Appeal's decision finding that the trade marks at issue were not similar as there are strong visual differences (paras 41 and 42). Although the marks may be similar conceptually, since they both convey the idea of a cow, this similarity is limited to an element which is not distinctive in respect of the goods for which the marks are used (para. 45).

  19. No likelihood of confusion C-214/05 P - Sergio Rossi SpA v OHIM (CFI. T-169/03 confimed) 18.07.2006 MISS ROSSI SISSI ROSSI Differences in the goods and signs confirmed by the Court of Justice, cl. 25/ cl. 18

  20. No likelihood of confusion FERRERO FERRO T-310/04 - Ferrero Deutschland GmbH v OHIM- 15.12.2006 Low degree of similarity in the goods; differences and similarities between the signs. Decision appealed.

  21. No likelihood of confusion T-501/04 - Bodegas Franco-Españolas v OHIM - 15.02.2007 ROYAL FEITORIA ROYAL Low degree of similarity between the goods -cl. 33- and low distinctive character of the word “royal”. Decision appealed.

  22. No likelihood of confusion T-158/05 - Trek Bicycle Corp. v Audi and OHIM. 16.05.2007 TREKALLTREK Low degree of similarity between the goods -cl. 12- and low conceptual similarity

  23. No likelihood of confusion T-88/05 - Quelle AG v OHIM. 08.02.2007 The mere phonetic similarity does not support the conclusion that there is a likelihood of confusion

  24. No likelihood of confusion T-353/04 - Ontex v OHIM - 13.02.2007 EURON CURON Overall the marks are different

  25. No likelihood of confusion COR T-342/05 - HENKEL v OHIM. 23.05.2007 Different beginnings, short words, dissimilar visual impact

  26. No likelihood of confusion T-167/05 - Grether v OHIM - Crisgo (Thailand)-13.06.2007 FENJAL Different overall impression

  27. No likelihood of confusion T-263/03 - Mülhens v Conceria Toska and OHIM -11.07.2007 TOSCA TOSKA Different goods -cl. 3 and 18

  28. No likelihood of confusion T-150/04 - Mülhens v Minoronzoni and OHIM - 11.07.2007 TOSCA Different goods -cl. 3 / 18 and 25

  29. No likelihood of confusion T-28/04 - Mülhens v Mirco Cara and OHIM - (different goods)16.07.2007 TOSCA Different goods -cl. 3 / 18 and 25

  30. Substantive Law: Existence of a likelihood of confusion T-172/05 -Armacell v OHIM - 10.10.2006 NOMAFOAM ARMAFOAM

  31. Decision of the CFI The Court appreciates the existence of a likelihood of confusion regarding only part of the EU consumers, namely those that are not English speaking. It further concludes that the goods are similar as the definition of the goods as applied for is extremely broad. This decision has been appealed.

  32. Existence of a likelihood of confusion T-483/04 - Armour Pharmaceutical Co v OHIM-17.10.2006 CALSYN GALZIN

  33. Decision of the CFI The opponent registered its trade mark for “Pharmaceutical and medical preparations, more specifically calcium-based preparations”. It provided proof of genuine use for “calcium-based preparations” only. The Court considered that these goods covered a sub-category of pharmaceutical preparations. The marks are deemed to be visually and aurally similar as well as the goods although they refer to different therapeutic indications.

  34. Existence of a likelihood of confusion T-256/04 - Mundipharma v OHIM. 13.02.2007 RESPICORT RESPICUR

  35. Decision of the CFI The earlier mark was registered for “pharmaceutical and sanitary preparations; plasters” and genuine use was shown only for “multi-dose dry powder inhalers containing corticoids, available only on prescription”. The Court finds that the trade mark must be deemed to have been registered for “therapeutic preparations for respiratory illnesses” (para. 36). The marks are deemed to be visually, phonetically and even conceptually similar, in particular for end users.

  36. Existence of a likelihood of confusion T-392/04 - Salvatore Gagliardi v OHIM and Norma Lebensmittelfilialbetrieb GmbH & Co.14.12.2006 Manou

  37. Decision of the CFI The earlier mark is registered i.a. for: clothing namely stockings, tights. The owner evidenced effective use of the mark for “woman’s tights“. The Court decides that this use is not sufficient for the category “clothing” but only for the sub-category “woman’s tights“ and possibly underwear (paras. 92 and 93 ). However there is a similarity in the goods (clothing / woman’s tights) and a visual and aural similarity in the signs.

  38. Existence of a likelihood of confusion T-43/05 - Camper S.L. v OHIM- 30.11.2006 Brothers BROTHERS BY CAMPER

  39. Decision of the CFI The dominant component of both marks is the word "brothers " ( para.61 to 64 ). Consequently, the marks are aurally, visually and conceptually similar ( para. 71 to 80 ).

  40. Existence of a likelihood of confusion T-81, 82, 103/03 - Mast-Jägermeister v OHIM and Licorera Zacapenaca -14.12.2006

  41. Decision of the CFI The marks are visually similar as they both contain the same dominant element namely the representation of the head of a reindeer, within a circle (para 92 ). They are also aurally similar for the Spanish speaking consumer for whom the word “venado” means “reindeer”. (para 94 ). They also refer to the same concept (para 100 ).

  42. Existence of a likelihood of confusion C-412/05 P - Alcon v OHIM and Biofarma - (CFI. T-130/03 confirmed) 26.04.2007 TRIVASTAN TRAVATAN

  43. Decision of the Court of Justice In connection with the definition of the public concerned, the Court of Justice decided that even if the medicines could only be bought on prescription, the public concerned does not only comprise the professionals but also the end consumer. Consequently, the Court of First Instance did not err by including end-users in the definition of relevant public.

  44. Existence of a likelihood of confusion C-171/06 - Devintec Développement Innovation Leclerc S.A. v OHIM (CFI. T-147/03 confirmed) 15.03.2007

  45. Decision of the Court of Justice The Court of Justice understands that the CFI, in its global appreciation of the likelihood of confusion, did not disregard the impact of the relevant public’s indirect understanding of the earlier mark, but merely held that this impact was not sufficient to outweigh to a large extent the elements of the opposing marks which are visually and phonetically similar (para. 58), and provided the requisite level of reasoning.

  46. Existence of a likelihood of confusion T-333 & 334/04 - House of Donuts v OHIM and PANRICO - 18.04.2007 DONUTS

  47. Decision of the CFI “Donuts” is a well-known trade mark in Spain. Since this term is not descriptive in said territory, the Court decides that said word dominates the overall impression which the average consumer would have when faced with the marks applied for.

  48. Existence of a likelihood of confusion C-344/05 P - OHIM v Shaker (CFI. T-7/04 reversed) 12.06.2007 LIMONCHELO

  49. Decision of the CFI The Court of First Instance held that the mark for which registration was sought contained a dominant element comprising the representation of a round dish decorated with lemons and concluded that the dominance of the figurative representation in comparison with the other components of the mark prevented any likelihood of confusion arising from a visual, phonetic or conceptual similarities between the words “limoncello” and “limonchelo”.

  50. Decision of the Court of Justice The Court of Justice annuls the decision on the ground that the CFI did not carry out a global assessment of the likelihood of confusion of the marks at issue (para.40). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (para. 42).

More Related