BUSY DAY FOR LES LUXEMBOURGOISIES

ECJ cornucopia

Not even the industrious IPKat can hope to deal with so many tip-top IP decisions from Luxembourg all in one go, so he has put together a little list. Today's freshly posted cases on Curia include

* Case C-421/04 Matratzen Concord AG v Hukla Germany SA. This is an Advocate General's Opinion on a reference from Barcelona on what is essentially a question of how one interprets Article 3(1)(c) of Directive 89/104: "under what conditions can a trade mark be registered in a Member State where, in the language of another Member State, it is not distinctive but merely denotes or describes the product concerned?" TM enthusiasts will remember the CFI's earlier ruling in 2002, on a dispute over a Community trade mark application, that MATRATZEN (which means "mattress" in Germany") was validly registered as a trade mark in Spain. Here Advocate General recommends that ECJ rule that

"Article 3(1)(c) of Council Directive 89/104 must be interpreted as meaning that a sign consisting solely of a word or words which denote the product which it covers or describe the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the product in the language of one Member State may not be registered as a trade mark in another Member State where a significant proportion of traders in and consumers of that product can reasonably be expected to understand the meaning of the word or words".

The IPKat keenly awaits the ECJ's ruling (late Spring 2006, he guesses), in the confident knowledge that whatever ruling results will infuriate either the Spaniards or the Germans (who now comprise a sizeable proportion the Spanish population).


* Case T-135/04 GfK AG v OHIM, BUS-Betreuungs- und Unternehmensberatungs GmbH. GfK applied to register as a CTM the word mark ONLINE BUS for statistical and consultancy services in Class 35. BUG opposed, citing an earlier registration of a mark that looked like this (left) but which was only used like this (right). The Opposition Division and the Board of Appeal both upheld the opposition, finding a likelihood of similarity: they also held that the differences between BUG's mark as registered and as used had not undermined the distinctive character of the mark as registered. The CFI agreed.

Right: now this is what the IPKat calls a real ONLINE BUS

Merpel says, it's strange to find a case where the tribunal has to expend as much energy comparing the opponent's mark as registered with the mark as used as it spends in comparing the opposing parties' signs.



* Case T-346/04 Sadas SA v OHIM, LTJ Diffusion marks a return to the limelight of one of Europe's most popular disputes: the battle between the owners of the ARTHUR and ARTHUR ET FELICIE marks. This time, Sadas applied to register ARTHUR ET FELICIE as a word mark for goods in Classes 16, 24 and 25. Sadas opposed, citing earlier registrations in Classes 24 and 25 of its figurative ARTHUR mark (left) and claiming that there was a likelihood of confusion.

Although in previous litigation before the ECJ Sadas argued successfully that ARTHUR ET FELICIE was not identical to ARTHUR, this time round it could not persuade the CFI that the respective marks were insufficiently similar to remove the likelihood of confusion between them.

The IPKat is sure that there must be some really exciting story that lurks behind this dispute - a family vendetta, perhaps - and keeps fuelling it when common sense and financial prudence would have stopped either side getting embroiled long, long ago. Does anyone know the real story?


* Case T-3/04 Simonds Farsons Cisk plc v OHIM, Spa Monopole intervening. The applicant was really asking for trouble here, picking a litigious foe like Spa Monopole and then trying to register this figurative mark (left) in the teeth of Spa's earlier registration of KINNIE for much the same goods. Well, the CFI dismissed the applicant's appeal with costs, which was always going to be the most likely result.


* Case C-431/04 Massachusetts Institute of Technology. This was a reference from the Bundesgerichtshof on the meaning of the words “combination of active ingredients of a medicinal product” within the meaning of Article 1(b) of Regulation 1768/92 on supplementary protection certificates. Advocate General Leger advises:

"The concept of “combination of active ingredients of a medicinal product” within the meaning of Article 1(b) ... must be interpreted as meaning that it does not preclude the grant of a supplementary protection certificate to a combination of two substances, one of which is a known substance with pharmacological properties of its own for a specific therapeutic indication and the other is necessary for the therapeutic efficacy of the first substance, for this indication".

The IPKat would not dare to pass comment on this without reading it carefully first, so he invites his readers to offer their thoughts in the meantime.