VW Variant CTM application hits a Spanish obstacle

The Curia website has today posted, in French and German only, the decision of the Court of First Instance in Case T-317/03 Volkswagen AG v OHIM, Nacional Motor, SA.

The IPKat thinks VW applied to register as a CTM the word VARIANT for goods and services in Classes 7, 12 and 37. NM opposed, citing its earlier Spanish registrations of the words DERBIVARIANT, DERBI VARIANT and VARIANTDERBI in the same Classes. It looks as if the Opposition Division dismissed the opposition (no likelihood of confusion; there was also some issue as to title to two of NM's marks) but the Board of Appeal annulled that decision, finding a likelihood of confusion with DERBIVARIANT. The CFI appears to have dismissed VW's appeal with costs, although it found on VW's behalf on one issue.

If any French or German speaker could post a clarificatory Comment below, the Kat would be most grateful.

Taking the PIS

The most recent issue of Product & Image Security has just fallen into the IPKat's paws. Published by EPI (part of the ECI International Group), it is an attractively-produced bimonthly magazine that focuses on the problems of counterfeiting, forgery, product piracy, substitution and diversion as well as retail theft and product tampering, providing a forum for discussing available solutions and technologies. Topics that might just excite the interest of IP owners include holograms, product identification, authentication, traceability, brand image protection, security labels, tags, tickets and packaging seals.

The January/February 2006 issue reports on the first Authentication Connections Forum, subtitled "Linking anticounterfeiting strategy with authentication technology". This forum will be held in Florida at the end of March. Sounds as if quite a few people there will be blessing the bad men whose illicit activities have resulted in their being sent there. Merpel adds, have you noticed where in Florida this forum is being held? It's Tampa - which to anyone involved in authentication technologies is a homophone of "tamper".


  1. Richard Dissman (Bird & Bird) has emailed to say "The CFI partly granted VW´s appeal as far as the Opposition Division had also decided that the TM could not be registered in classes 14 and 27. The reason is quite simply that the opposition had only challenged the application for classes 7, 12 and 37, but the Board of Appeal had "ultra petita" dimissed the application also for classes 14 and 27". Many thanks, Richard.

  2. ... and this has come in from Mélanie Lemeunier: "I've just read the above mentioned case and can confirm the elements posted on your blog, but additional information might be relevant:
    - VW also applied to register the word "variant" as a CTM for other classes, these classes were also concerned by the decision of the board of appeal which rejected this application. As the opposition of Nacional Motor didn't target this classes, this part of the board of appeal decision has been cancelled by the CFI (the OHIM admitted that they had made a mistake on that issue).
    -The rest of VW appeal (concerning classes 7, 12 and 37) has been dismissed on these grounds:

    1. Products concerned were similar and services are linked to the category of motor vehicles.

    2. The verbal sign "variant" constituted the major part of the existing spannish TM, there's a similarity of words and concept, and there's no graphic element to differentiate them [that's why the CFI distinguishes that case from Plus/OHMI – Bälz et Hiller (Turkish Power) (T‑34/04) where the graphic element in the application "neutralised" the similarity of concept]

    3. The identity and similarity of both products and signs created an actual risk that consumers think these products have the same commercial origin (if they are deemed to be particularly careful when they buy a car or a motorcycle, they are clearly less cautious concerning spare parts or other linked services).

    These elements already point back to the first hours of the Trade Mark class at UCL...". Thanks a treat, Mélanie


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