LATEST CASES FROM THE COURT OF FIRST INSTANCE

The IPKat has found three fresh Community trade mark cases awaiting him today on the Curia website. They are

* Case T-211/03, Faber Chimica v OHIM, Industrias Quimicas Naber, SA Nabersa. Faber applied to register as a CTM for chemicals, bleaches, paints etc in Classes 1 to 3. Naber opposed, citing its earlier Spanish registration of for goods in the same classes. The Opposition Division held there was no similarity of any kind between the two marks but surprisingly the OHIM Fourth Board of Appeal considered that there was both visual and aural similarity and that the relevant Spanish consumers would be likely to be confused. The CFI annulled the Board's decision. The marks were not similar and, even if they were, the relevant consumers were sufficiently specialist to be able to tell them apart.

* Case T-273/02, Krüger GmbH & Co. KG v OHIM, Calpis Co. Calpis sought to register CALPICO as a Community trade mark for soft drinks; Krüger opposed, citing its earlier German registrations of CALYPSO for fruit powders and non-alcoholic preparations for making fruit drinks. The Opposition Division thought the marks too different for there to be any likelihood of confusion. The First Board of Appeal agreed. So too did the CFI, which said:

"51 ... in its decision dismissing the opposition on the ground that there was no likelihood of confusion, the Opposition Division stated:

‘Although identical goods are at issue in this case, the differences between the signs which are compared suffice to distinguish [the marks] with enough certainty. Admittedly, strict criteria should be applied in this case as regards the difference which must exist between the marks, in particular because the goods compared are staple goods which, as experience shows, are bought fairly carelessly and without particular attention being paid to the names of the goods.’

52 [T]he Board of Appeal ... stated:

‘23 The goods covered by each of the marks are everyday goods that consumers generally buy as they go past in supermarkets and shops selling beverages. The price of those articles is such that they may be described as low-cost articles. However, given the extensive choice in the fruit juices and beverages sector, the average customer’s attention should not be regarded as insignificant. Accustomed to an extensive choice of fruit juices and goods of that kind, such as powders presented in similar packaging, consumers will pay attention to the packaging of each or will examine the marks more closely before making a purchase.’

53 Given that the goods designated by the conflicting marks are staple goods, both the Opposition Division and the Board of Appeal considered that the level of attention of the relevant public was not high. It is true that paragraph 23 of the [Board's] decision differs from the Opposition Division’s decision as regards assessment of the exact degree of attention which the relevant public may pay to the conflicting marks, on account of the effect of extensive choice on attention in the fruit juices and beverages sector. However, while the Board of Appeal took the view that extensive choice in the fruit juices and beverages sector may lead the relevant public to pay particular attention to the conflicting marks, it none the less did not consider that that attention was high.

54 In any event, the difference in the assessments in the decisions of the two bodies of OHIM does not imply any consequence as regards the absence of similarity between the conflicting signs and the absence of likelihood of confusion between the marks which were found by those bodies. Having regard to the visual, aural and conceptual differences between the conflicting signs noted in paragraphs 38 to 43 above, the average German consumer will not attribute the same commercial origin to the goods designated by the conflicting marks even if he pays no particular attention to those marks".

* Case T-318/03, Atomic Austria GmbH v OHIM, Fabricas Agrupadas de Munecase de Onil, SA. FAMO applied to register the words ATOMIC BLITZ as a Community trade mark for games, playthings and sporting articles in Class 28. Atomic Austria opposed, citing a likelihood of confusion with its earlier ATOMIC registrations in Austria. The Opposition Division dismissed the opposition on the ground that there was no supporting documentation to suggest that Atomic Austria's marks, which were registered between 1973 and 1984, were still on the register, even though OHIM did not explicitly ask for this information to be provided and the opposition was accompanied by a certification by Atomic Austria's representative that the marks were still in force. The Second Board of Appeal agreed, but the CFI has now set this decision aside. The CFI observed:

"37 The examination of the facts and evidence submitted to OHIM must be conducted in such a way as to respect the right to a fair hearing of the parties to the opposition proceedings and the right to procedural equity. If an applicant ... doubts the probative value of documents submitted by the opponent to prove the existence of a claimed earlier right, or even the extent of that right, he may say so in the proceedings before OHIM, which is required to consider the relevant observations carefully.

38 However, OHIM cannot avoid conducting a comprehensive assessment of the facts and documents presented to it by arguing that it is for the opponent, on his own initiative, to provide OHIM with supporting evidence in the form of detailed information on the law of the Member State in which there is protection for the earlier mark on which the opposition is based.

39 Furthermore, ... neither Regulation 40/94 nor Regulation 2868/95 specifies a compulsory form of evidence to be lodged by the opponent to prove the existence of his earlier right. ...

40 It follows from this that .. an opponent is free to choose the evidence he considers useful to submit to OHIM in support of his opposition and ... OHIM is obliged to examine all the evidence submitted to it in order to determine whether it does prove that the earlier mark was registered or filed, and cannot reject out of hand a particular type of evidence on the basis of the form it takes".