IN CASE YOU WERE WONDERING ...

When other people have been wasting their bank holiday weekend in sad pursuits like recolonising the Lost Continent of Ikea, the IPKat's great friend Tibor Gold (a partner in Kilburn & Strode) has been at his productive best, producing the following notes on two recent Court of First Instance cases on Community trade marks that have failed to make it into English. The two cases are

Case T-31/03 Grupo Sada, pa, SA v OHIM (Sadia, SA), CFI 4th chamber, 11 May 2005

The applicant’s CTM application in classes 29, 31 and 35 was for a composite mark made up of an abstract graphic alongside of which were the words GRUPO and SADA one above the other, with SADA much bigger and somewhat stylised. The intervener (opponent) opposed under Art. 8(1)(b) CTMR on the basis of its earlier Spanish registration in class 29 for a slightly stylised word mark ‘Sadia’. The Opposition Division allowed the opposition in respect of the applicant’s class 29 only, a decision upheld by the First Board of Appeal (“BoA”).

The effectively only ground of appeal to CFI was on the Art. 8(1)(b) CTMR point (=likelihood of confusion). However, the CFI found that that ground had three sub-grounds:

(i) the BoA’s failure to take into account of the high degree of knowledge of the mark by Spanish consumers;

(ii) the BoA’s misapplication of the concept of ‘global appreciation’ in the comparison of the marks and

(iii) the BoA’s failure to take into account the significance of the fact of co-existence in the Spanish market the applicant’s three other Spanish registered marks, all of which are older than the opponent’s mark.

The appeal failed for the following reasons:

(i) Art. 74(1) does not permit OHIM to examine facts or arguments that have not been invoked by the parties to the proceeding.: Henkel KGaA v OHIM (LHS(UK)) (KLEENCARE) T-308/01 [2003] ECR II-3253, [2004] ETMR 1022 (74); nor will the CFI entertain the examination of evidence, facts or arguments first introduced before it: Alejandro v OHIM (Anheuser-Busch) (BUDMEN) T-129/01 [2003] ECR II-2252.

(ii) The CFI did not agree with the appellant’s arguments that the BoA’s approach was unduly dissective rather than making an overall assessment. The CFI affirmed the findings of the BoA (a) that the relevant public to consider is the general Spanish public, (b) that the goods are identical, and (c) that while not ignoring the graphic element and the generic word GRUPO, the dominant visual and phonetic elements to compare are the words SADA and SADIA which are the elements the average consumer will remember and which are confusably similar. The CFI cited Oberhauser v OHIM (Petit Liberto),(FIFTIES), T-104/01, [2002] ECR II-4359, [2003] ETMR 58.

(iii) It is not wholly to be excluded that in certain cases the co-existence in the market of an applicant’s registered marks earlier than the opponent’s mark may be taken into account – but only if it is duly proved before the Office that (A) such co-existence is based on the absence of the risk of confusion on the part of the relevant public, and if further (B) the co-existing marks are identical. Here the applicant’s marks anterior to the opponent’s were not identical, nor did the applicant furnish any proof of the absence of the risk of confusion. Hence the BoA was right to reject this argument.

Case T-288/03 TeleTech Holdings, Inc. v OHIM (Teletech International SA) CFI 2nd Chamber, 25 May 2005

This started as an application for part-cancellation against a registered CTM “TELETECH GLOBAL VENTURES” in classes 35 and 38 based on the applicant’s earlier French national registration TELETECH INTERNATIONAL, also in those classes. The Cancellation Division of OHIM granted the application for some (only) of the services in the attacked part of the registration. On appeal, the BoA upheld the decision of the Cancellation Division in part. The CTM proprietor appealed to the CFI on the following grounds:

(i) Violation of the principles of co-existence and comparison of CTMs and distinctive national marks and signs;

(ii) Violation of the defendant’s rights of defence and

(iii) Misconstruction of Art. 8(1)(b) CTMR.

Under (i) the appellant sought to rely on an allegation that “TELETECH GLOBAL VENTURES” was a well-known mark, the sense of Art. 6bis of the Paris Convention as well as Art. 16 of TRIPs, in the EU and above all in France, since before the date of the mark owned by the applicant for cancellation. It also tried to rely on Art. 106 CTMR.

The CFI found that while the BoA’s decision on this point could have been put better and more clearly, it is nevertheless possible to understand it as stating that the allegedly well-known quality of the attacked mark has no influence on the determination of the question of the likelihood of confusion between the compared marks. Moreover, OHIM has no power or ability to examine the validity of an earlier right invoked against a CTM in cancellation proceedings: Matratzen Concord v OHIM (Hukla Germany), T-6/01, [2002] ECR II-4335, [2003] ETMR 392 (31).

The CFI also dismissed the argument of that it would be ‘absurd’ if the appellant could not convert its CTM into a French national registration on the basis that, if it is really well-known, the appellant can continue to use it and/or can base a French cancellation proceeding against the applicant‘s French registration on it. The argument founded on Art. 106 CTMR was given very short shrift as simply not analogous and misconceived. Similarly rejected was the argument based on Art. 6bis of the Paris Convention /Art. 16 of TRIPs which, as the CFI points out, merely provide the owner of a well-known mark with a right to oppose the use a later sign.

Under (ii), the appellant argued that if the BoA did not find its case on ‘well-knownness’ established, it should have been told this and allowed to introduce additional material. But the CFI disagreed. OHIM was under no such duty. The facts were that the evidence submitted by the appellant before OHIM did not establish that its mark was well-known, (even if that were relevant to the cancellation action). The CFI relied on Art. 74 CTMR which limits OHIM’s power to adjudicate only on the parties’ arguments and facts submitted to it. Thus, on the KLEENCARE principle, Henkel KGaA v OHIM (LHS(UK), T-308/01 [2003] ECR II-3253, [2004] ETMR 1022 (74), the CFI found no error with the BoA here.

Lastly, under (iii), the argument was only about the differences between the competing signs, the targeted public and the services being essentially the same. The CFI upheld the BoA’s finding that TELETECH was a coined word, with TELETECH being clearly dominant at the beginning of the whole, while ‘global’, ‘international and ‘ventures’ were descriptive words. Though the last-mentioned did not exist as a French word, not only does it lie at the – less likely to be memorised - end of a three-word mark but in this field the relevant public is particularly exposed to Anglicisms. Hence the finding of a likelihood of confusion was affirmed.

The IPKat is hugely grateful to Tibor for his sterling efforts.