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Wednesday, 11 July 2007

Today's Community trade mark appeals

Today's Community trade mark decisions, fresh from the Court of First Instance of the European Communities (CFI), are as follows

Case T‑150/04, Mülhens GmbH & Co. KG v Office for Harmonisation in the Internal Market, Minoronzoni Srl. Minoronzoni applied to register the TOSCA BLU mark (right) for accessories and clothing in Classes 18 and 25. Mülhens opposed, citing its earlier use of the word Tosca for eau de toilette, eau de Cologne, body lotions, toilet soaps, shower gel etc. The Opposition Division rejected the opposition: yes, Tosca was well known for those goods in Germany; no, it wasn't for the same or similar goods and no, being unregistered it wasn't entitled to well-known mark protection under art.8(5) of Regulation 40/94. The Board of Appeal agreed and so, dismissing Mülhens' further appeal, did the CFI. As to whether the respective parties' products were complementary the Court had this to say:

"35 ... it cannot be ruled out, particularly in the fashion and body and facial care sectors, that goods whose nature, purpose and method of use are different, quite apart from being functionally complementary, may be aesthetically complementary in the eyes of the relevant public.

36 In order to give rise to a degree of similarity for the purposes of Article 8(1)(b) of Regulation No 40/94, this aesthetically complementary nature must involve a genuine aesthetic necessity, in that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use these products together ...

37 However, the existence of an aesthetically complementary nature between the goods at issue ... is not enough to establish similarity between those goods. For that, the consumers must consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same ...

38 In the current proceedings, the applicant claims only that the public is accustomed to fashion industry products being marketed under perfume trade marks owing to the practice of granting licences. Yet, if proved, that point alone would not be sufficient to compensate for the absence of similarity between the goods at issue. Such a point does not, in particular, establish the existence of an aesthetically complementary connection between perfumery goods ... and the leather goods and clothing ... so as to mean that one is indispensable or important for the use of the other and that consumers consider it ordinary and natural to use those goods together.

39 The applicant nevertheless claims that the goods at issue have in common their importance for a person’s image and appear together in fashion magazines. In this respect, it should be pointed out that, apart from the fact that this argument, which was not pleaded in the hearings before OHIM, has been submitted out of time, the point does not suffice, in any event, to establish the existence of an aesthetically complementary nature ..."
In other words, says the IPKat, the fact that an individual's image is built upon the sending of brand-related messages to his friends and colleagues does not forge a link between the fashion goods whose style he endorses.


Case T-192/04, Flex Equipos de Descanso, SA v Office for Harmonisation in the Internal Market, Leggett & Platt, Inc. Leggett & Platt applied to register the FLEX mark (left) for spring assemblies, bedding and furniture in Classes 6 and 20. Flabesa opposed, citing a likelihood of confusion with its earlier Spanish LURA-FLEX registered trade marks for a wide range of products in Class 6 and also arguing well-known mark protection under Art.8(5) of Council Regulation 40/94. After Leggett & Platt made various observations and Flex (which had by then taken over Flabesa) responded to them by submitting further evidence, the Opposition Division dismissed the opposition, ruling that it was unable to consider Flex's late evidence and adding that the outcome might have been different if Flex had, within the prescribed period, submitted persuasive evidence of the enhanced distinctiveness of its earlier trade marks owing to their widespread use and had lodged the necessary translations of the relevant evidence. In the absence of that, their contentions and evidence could not be taken into account.

Flex appealed to the Board of Appeal, arguing that its late evidence was admissible because it was by way of response to Leggett & Platt's observations. The Board of Appeal upheld the decision of the Opposition Division, adding that the Art.8(5) argument had to be dismissed on the ground that Flex had not provided evidence of the reputation of its earlier marks within the prescribed period, nor had it shown how use of the applied-for mark would allow Leggett & Platt to take unfair advantage of the distinctive character or the reputation of the earlier marks or cause damage to them. Flex appealed.

The CFI annulled the Board's decision on the basis that the Board did not consider whether to exercise its discretion to consider the out-of-time evidence:
"61 Since it was out of time in providing the Opposition Division with translations in the language of the proceedings of the evidence and documents supporting the reputation of its earlier marks, the applicant is to be regarded as having failed to submit that evidence in due time, within the meaning of Article 74(2) of Regulation No 40/94, so that OHIM could disregard it, pursuant to that provision.

62 Article 74(2) grants the Board of Appeal a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take account of facts and evidence before it which, as in the present case, were submitted out of time before the Opposition Division ...

63 Taking such facts or evidence into account is particularly likely to be justified where, first, the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition and, second, the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account ...

64 Such a possibility for the Board of Appeal is likely to contribute de facto to ensuring that marks whose use could later on successfully be challenged by means of annulment or infringement proceedings are not registered ...

65 In addition, by providing that the Board of Appeal may exercise any power within the competence of the department of OHIM which was responsible for the decision appealed, Article 62(1) of Regulation No 40/94 grants the Board of Appeal power to carry out a new, full examination of the merits of the opposition, in terms of both law and fact ...

66 In the present case, from the outset the Board of Appeal refused to allow the translations of the evidence and documents submitted by the applicant in support of the reputation of its earlier marks on the sole ground that taking account of them was automatically precluded owing to their submission out of time before the Opposition Division. Accordingly, it considered that it had no discretion to take account of the evidence at issue.

67 It follows that the Board of Appeal erred in law by declining from the outset to exercise its discretion in deciding whether or not to take account of the evidence and documents supporting the reputation of the applicant’s earlier marks".
Once again, the IPKat says, it's a case of following the principle in Case C-29/05 Kaul (see IPKat post here): you don't have to consider the late evidence but you mustn't jettison it without further thought - you have to steer between the two extremes.


Case T-263/03 Mülhens v OHIM - Conceria Toska (TOSKA) is in French and Italian only. So too, in fact, is Case T-28/04 Mülhens v OHIM - Cara (TOSKA LEATHER). Volunteer translators, please help!


Finally there's Case T-443/05 El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños). an application was made to register as a Community trade mark the sign on the left for goods in Classes 16, 21 and 25 which included paperware, household goods and clothing. An opposition was filed by the owner of the PIRANHA Spanish trade mark registrations for various accessories and goods in Classes 18 and 25. The grounds of opposition were under Articles 8(1)(b) and Article 8(5) of Regulation 40/94 (likelihood of confusion by reason of the similarity between the marks and goods and reputation-based grounds).

The Opposition Division partially upheld the opposition but the Board of Appeal dismissed it entirely: the goods concerned had a different nature and purpose, they were produced by different manufacturers and were sold through different distribution channels. There was no competitive relationship between the goods and they could not be substituted for one another and, therefore, they could not be regarded as similar. Furthermore, any ‘aesthetic complimentarity’ between the goods concerned was too subjective to be taken into account. Since the requirement that the goods are similar – which is necessary to establish the existence of a likelihood of confusion on the territory concerned – was not satisfied, it was unnecessary to examine the degree of similarity or whether the signs at issue were identical. The opponent appealed to the CFI, which annulled the Board's decision. Said the CFI:

"40 ... the Board of Appeal held that there was no likelihood of confusion on the part of the relevant public solely on the basis of a comparison of the goods concerned. However, even a slight similarity between the goods concerned would have required the Board of Appeal to ascertain whether a high degree of similarity between the signs could have given rise, in the mind of a consumer, to a likelihood of confusion as to the origin of the goods.

41 It is therefore appropriate to determine whether the assessment of the Board of Appeal that the goods at issue are not similar is founded.

42 First, the goods in class 25 and those in class 18 are often made of the same raw material, namely leather or imitation leather. That fact may be taken into account when assessing the similarity between the goods. However, given the wide variety of goods which can be made of leather or imitation leather, that factor alone is not sufficient to establish that the goods are similar ...

43 Second, it is apparent that the distribution channels of some of the goods at issue are identical. However, a distinction must be made according to whether the goods in class 25 are compared to one or other of the groups of goods in class 18 identified by OHIM.

44 ... as regards the second group of goods in class 18 (leather and imitations of leather, animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery), the Board of Appeal rightly held that the distribution channels were different from those used for the distribution of goods in class 25. The fact that those two categories of goods may be sold in the same commercial establishments, such as department stores or supermarkets, is not particularly significant since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin ...

45 ... as regards the first group of goods in class 18, namely leather and imitation leather goods not included in other classes such as handbags, purses or wallets, it should be noted that those goods are often sold with goods in class 25 at points of sale in both major retail establishments and more specialised shops. That is a factor which must be taken into account in assessing the similarity of those goods.

46 ... the Court has also confirmed the existence of a slight similarity between ‘ladies’ bags’ and ‘ladies’ shoes’ ... That finding must be extended to the relationships between all the goods in class 25 designated by the mark applied for and the leather and imitation leather goods not included in other classes, in class 18, designated by the earlier mark.

47 In light of the foregoing, it must be held that there is a slight similarity between the goods in class 25 and the first group of goods in class 18. Consequently, the Board of Appeal could not conclude that there was no likelihood of confusion on the part of the relevant public solely on the basis of a comparison of the goods concerned.

48 As to whether clothing, footwear and headgear in class 25 are complementary to ‘leather and imitations of leather, and goods made of these materials and not included in other classes’ in class 18, it must be recalled that, according to the case-law, goods are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods lies with the same undertaking ...

49 Goods such as shoes, clothing, hats or handbags may, in addition to their basic function, have a common aesthetic function by jointly contributing to the external image (‘look’) of the consumer concerned.

50 The perception of the connections between them must therefore be assessed by taking account of any attempt at coordinating presentation of that look, that is to say coordination of its various components at the design stage or when they are purchased. That coordination may exist in particular between clothing, footwear and headgear in class 25 and the various clothing accessories which complement them such as handbags in class 18. Any such coordination depends on the consumer concerned, the type of activity for which that look is put together (work, sport or leisure in particular), or the marketing strategies of the businesses in the sector. Furthermore, the fact that the goods are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods.

51 It is clear that some consumers may perceive a close connection between clothing, footwear and headgear in class 25 and certain ‘leather and imitations of leather, and goods made of these materials and not included in other classes’ in class 18 which are clothing accessories, and that they may therefore be led to believe that the same undertaking is responsible for the production of those goods. Therefore, the goods designated by the mark applied for in class 25 show a degree of similarity with the clothing accessories included in ‘leather and imitations of leather, and goods made of these materials and not included in other classes’ in class 18 which cannot be classified as slight.

52 Therefore, the Board of Appeal was wrong to hold that in this case there was no likelihood of confusion without having carried out a preliminary examination as to any similarity between the signs".

The IPKat says, let this be a warning to applicants who are successful on relative grounds appeals to the Board of Appeal - if you think you may win too easily, because neither your mark nor your goods seem to have much in common with those of your opponent, beg the Board to consider the opponent's point of view with due care and attention. Better still, says Merpel, why not emphasise the strong points of the opposition and then provide your own submission as to why the Board, having considered them, must surely reject them. Only then can you be sure of your well deserved victory.

6 comments:

Anonymous said...

So, clothes and perfumes are not "aesthetically complementary" (here's another new CFI concept to grapple with), whilst clothes and handbags are ?

Chris McLeod said...

Re. T-28/04 and T-263/03:

The first had the same basis as T-150/04, ie unregistered rights in Germany in relation to perfumes etc. The later mark covered goods in classes 16, 18 and 25. The opposition division found in the opponent's favour for class 25 "even though the goods in question had a low degree of similarity". The Board of Appeal upheld this decision. The CFI agrees. It does substantial analysis of how one should determine similarity of goods and the nature of the goods in classes 16 and 18. The arguments run by Muelhens and the CFI are otherwise very similar to those in T-150/04.

In T-263/03, the opposition basis was again the same but the application for the mark TOSKA was solely for class 18 goods. The opposition was rejected on the same basis, the BoA upheld the opposition division decision and the CFI agreed on the same basis as in the other judgments.

Anonymous said...

Then what about perfumes and handbags? Can we say that, if A is complementary to B and B is complementary to C, then A is complementary to C?

Anonymous said...

No, that looks too much like a logical proposition - and as such well divorced from the wacky world of trade marks.

Shannon said...

Re Case T-192/04. I think the marks are the wrong way round here - Leggett & Platt applied to register the word mark LURA-FLEX - not the figurative mark shown? The figurative mark is the subject of the earlier Spanish registrations. Please correct me if this is wrong!

Jeremy said...

Shannon - you're absolutely right. That'll teach me to multitask ...
Many thanks for pointing this out.

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