DISRUPTION AHEAD; FRUIT CASES; NEW AG

Disruption ahead!

Don't even think of looking for key intellectual property decisions of the European Court of Justice and the Court of First Instance over the coming weekend. According to a notice on the Curia website:

"Due to maintenance on the Data Centre infrastructure (Power Supply), the information system Curia case-law database will be unavailable between Friday 28 October 2005 19:00 and Tuesday 01 November 2005 06:00.

We do apologise for the inconvenience caused".

The IPKat thanks Curia for this warning. The inconvenience caused by not being able to access ECJ and CFI decisions for a few days is however quite trifling in comparison with the inconvenience caused by finding those decisions but not being able to understand them because they have not been made available in one's own language. Merpel says, stop complaining! In intellectual property cases at any rate, the situation seems to have improved quite a bit since the Dark Ages last year.


2 Today's fruit cases

Meanwhile, the rulings in two juicy Community trade mark appeals relating have been posted on the Curia website today. They are

* The case of the smelly strawberry

Case T-305/04 Eden Sarl v OHIM, in which Eden applied unsuccessfully to register the smell of ripe strawberry in conjunction with the image of a strawberry (left) in respect of a large range of goods in Classes 3, 16, 18 and 25. The examiner rejected the application on the grounds that the mark was neither capable of being graphically represented (being, in part, a smell) nor distinctive for the goods in question. The Board of Appeal upheld the decision on the ground of lack of graphic representation alone. Eden appealed. The CFI, relying on earlier ECJ case law, had no difficulty in dismissing the appeal. For those who lament the passing of Monty Python, just try imagining a bench of judges adjudicating as follows without collapsing into peals of laughter:

"31 ... the study carried out by Coopération européenne dans le domaine de la recherche scientifique et technique ... does not bear out the applicant’s argument that all varieties of strawberries have the same smell. ... [t]hat study indicate[s] that examiners on a sensory panel were able to distinguish five of the nine crops ... by their smell with a probability of error equal to or less than 5%. That means ... that the different varieties of strawberries produce significantly different smells. That interpretation is borne out by the fact that the probability of error for the descriptive term ‘smell of strawberries’ is identical, in respect of certain crops, to that found for other descriptive terms, such as ‘strawberry‑flavour (fragrance)’ or ‘sweet flavour’, which are considered by the study to be very effective in terms of differentiating the varieties of strawberries.

32 Admittedly, ... the smell of strawberries did not make it possible to distinguish between the varieties of strawberry in a significant way in respect of all the different crops. However ... in order to verify whether the applicant’s argument that the smell of ripe strawberries is unique and unequivocal in respect of all varieties is well founded, it is not necessary that those varieties systematically produce significantly different smells. The mere finding that it was possible to differentiate the varieties by their smell in five of the nine crops analysed in the study is sufficient to show that strawberries do not have just one smell.

33 It must therefore be held that the evidence adduced before ... shows that the smell of strawberries varies from one variety to another. Consequently, since the description ‘smell of ripe strawberries’ could refer to several varieties and therefore to several distinct smells, it is neither unequivocal nor precise and does not eliminate all elements of subjectivity in the process of identifying and perceiving the sign claimed.

34 It is, moreover, common ground that ... there is no generally accepted international classification of smells which would make it possible, as with international colour codes or musical notation, to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code specific to each smell. [...]

36 As regards ... the figurative element, the Board of Appeal stated that ‘such a representation (was) even less precise than a description in words’ on the ground that, first, ‘it (was) not possible for the competent authorities and the public … to determine whether the sign, which is the subject of protection, is the image of the ripe strawberry itself, or its smell’ and, second, the image of the strawberry [would] be replaced in the mind of the consumer by its equivalent in words ‘red strawberry’ (or) ‘ripe strawberry’, which amounts to defining once again the smell in words, such a definition having already been considered to be too vague’.

37 ... [t]here is no reason to consider that the authorities and the public will not be able to determine whether the protected sign is a figurative sign, consisting of a strawberry, or an olfactory sign which is supposed to have the same smell as ripe strawberries. Since it is stated in the application for registration that it is an olfactory mark, there can be no doubt concerning the nature of the sign registered, in the same way that the authorities and the public are able to determine whether a musical stave represents a figurative sign, consisting of lines and signs, or the melody of which the stave is the transcription.

38 Second ... the fact that the image of the strawberry can be replaced in the mind of the consumer by the expression ‘red strawberry’ is irrelevant. Any figurative representation of a mark, whatever its type, may be described in words and will be replaced in the mind of the consumer by a description whenever that description is easier to commit to memory than the figurative representation itself. ...

39 In Sieckmann ... the Court of Justice held that the graphic representation of an olfactory mark must, in order to be accepted, represent the odour whose registration is sought and not the product emitting that odour. It therefore held that the chemical formula of the substance emitting the odour in question could not be regarded as a valid graphic representation.

40 The Court of First Instance cannot but find therefore that since the image of a strawberry contained in the application for registration represents only the fruit which emits a smell supposedly identical to the olfactory sign at issue, and not the smell claimed, that does not amount to a graphic representation of the olfactory sign.

41 Moreover, that image is subject to the same criticism as the description ‘smell of ripe strawberries’. As it has been established that strawberries, or at least some of them, have a different smell according to their variety, the image of a strawberry whose variety is not specified does not enable the olfactory sign claimed to be identified with clarity and precision.

42 Consequently, the findings of the Board of Appeal in relation to the image of the red strawberry must also be upheld".

The IPKat finds this whole exercise risible. Why could not the Community Trade Mark Regulation simply have said that smells aren't registrable as trade marks and just have done with it? And why do businesses persist in wasting their time, money and effort trying to register these worthless things?

* The Case of the Irritating Orange

Case T- 336/03 Les Editions Albert Rene v OHIM, Orange A/S involved a failed opposition. Orange applied to register MOBILIX for telecommunications-related goods and services in Classes 9, 16, 35, 37, 38 and 42. Rene, publishers of the Asterix stories that featured a character called Obelix, opposed, citing its earlier Community and national trade mark registrations of the word OBELIX for a large number of goods and services and pleading a likelihood of confusion. Partially annulling the decision of the Opposition Division, the Board of Appeal allowed the opposition in respect of certain goods and services in Classes 9 and 35 but rejected it in respect of all the others. Rene appealed.

The CFI dismissed the appeal. Attempts by Rene to admit fresh evidence to support the contention that OBELIX was a well-known mark (and therefore that it was entitled to protection under Article 8(5) of Council Regulation 40/94) were rejected. Nor, having failed to oppose the application on the basis of Article 8(5), could Rene raise that ground of opposition on appeal to the CFI. As to the likelihood of similarity of MOBILIX and OBELIX, the words were at best only slightly similar in visual terms; any aural similarity was however negated by their conceptual dissimilarity.

The IPKat thinks this must surely be right and wonders whether Orange must be regretting not having appealed against the refusal of its application for some of its Class 9 and 35 goods and services.


3 New Advocate General appointed

Francis Jacobs - whose Opinions in major trade mark cases including BABY-DRY, DOUBLEMINT and DAVIDOFF have helped shape European trade mark law - retires this December as one of the eight Advocates General of the European Court of Justice. His replacement is Eleanor Sharpston QC (right), who has a longstanding interest in, and substantial experience of, European law, but who does not (yet) appear to have cultivated an interest in IP law. The Kat will be watching ...