SMART(IE) THINKING FROM OHIM

The IPKat has come across an interesting OHIM Board of Appeal decision. Mars applied to register the shape of its packaging for M&Ms Minis, a cylinder with an overhanging lid, as a CTM. Nestle opposed the application based on its national and international registrations of the cylindrical shape of its packaging. Points of interest include:

* The Board mapped out what it thinks the relationship between the absolute and relative grounds are as follows: the ECJ has said that there is a public interest in not monopolizing certain signs, particularly those which lack distinctive character or are descriptive and that descriptive signs in particular should be free for others to use. The ECJ has also said that highly distinctive marks enjoy broader protection than less distinctive marks and vice-versa. The interests protected in trade mark law overlap in so far as the elements for which there is a public interest in denying protection (in the context of registration) are also those which do not give a mark distinguishing power in the context of likelihood of confusion. When examining the likelihood of confusion, the scope of protection of the earlier mark and in particular their distinguishing power and the public interest in not protecting certain signs at the registration stage may have influence on the scope of protection. Thus, when distinctive character is examined in the context of likelihood of confusion, it is a normative and not an empirical criterion. The IPKat notes that the reverse approach has been rejected by the ECJ – the scope of confusion-based protection has been said to be irrelevant to judging the registrability of a mark on the absolute grounds. He also notes that the effect of the Board’s approach was essentially to conduct an analysis of the registrability of the mark under the absolute grounds in order to the degree of distinctive character of Nestle’s mark, even though the validity of the mark was not challenged. It is questionable whether this is an efficient approach.

* The ECJ’s judgment in Case C-408/01 Adidas v Fitnessworld was applied. Of particular interest is the fact that the Board equated use of a sign that is viewed as packaging with use that is seen as mere embellishment. The IPKat says that the application by the Board of the ECJ’s discussion of embellishment under Art.8(5) of the CTM Regulation (40/94) in Adidas v Fitnessworld goes to show that embellishment is more than just a trade mark use issue since trade mark use when two marks are being compared is only relevant to infringement and not to registration cases such as this one.

* In the course of its decision, the Board discussed the application of descriptiveness, distinctiveness and functionality to shape marks.

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