Case T-129/04 Develey Holding GmbH & Co Beteiligungs KG v OHIM is one of Wednesday’s crop of Court of First Instance IP cases. This is a strange case, in which a number of arguments based on international trade mark law conventions failed to get off the ground.

Develey applied to register a three-dimensional sign in the shape of a bottle as a CTM for various foodstuffs and drinks in Classes 29, 30 and 32. The bottle had a thin neck, a flattened and wide body which was bulbous, its lower part finished in a roll and it had depressions arranged symmetrically on the signs of the body of the bottle. Develey already had a German trade mark for this bottle. The examiner and the OHIM Board of Appeal found that the mark lacked distinctiveness since it did not differ significantly from the normal shapes available on the market in a way that would give it trade mark significance.

Develey appealed, arguing: (i) OHIM failed to discharge the burden of proof, which constituted a breach of Article 74(1) of Regulation 40/94; (ii) OHIM had failed to apply Article 6 quinquies (A)(1) of the Paris Convention since OHIM deprived the earlier national registration of protection; (iii) OHIM had breached Article 73 of Regulation 40/94, Article 6 quinquies of the Paris Convention and Article 2(1) of TRIPs, since it failed sufficiently to examine the earlier national registration and (iv) breach of Article 7(1)(b) of Regulation 40/94, since OHIM failed to recognise the distinctive character of the applied-for mark and the fact that its features had no technical function.

Art.6 quinquies of Paris reads as follows:
A(1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article. Such countries may, before proceeding to final registration, require the production of a certificate of registration in the country of origin, issued by the competent authority. No authentication shall be required for this certificate.

(2) Shall be considered the country of origin the country of the Union where the applicant has a real and effective industrial or commercial establishment, or, if he has no such establishment within the Union, the country of the Union where he has his domicile, or, if he has no domicile within the Union but is a national of a country of the Union, the country of which he is a national.
B Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases:

(i) when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed;

(ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;

(iii) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.
This provision is subject, however, to the application of Article 10bis.

Art.2 of TRIPs requires WTO Members to comply with the Paris Convention.

The CFI dismissed the appeal.

The first argument

*Art.6 quinquies of the Paris Convention was irrelevant in these proceedings. That article deals with the protection and registration of trade marks in another State which is a signatory to the Paris Convention and contains no provisions concerning the burden of proof in CTM proceedings.

*The examination under the absolute grounds is an objective and impartial legal assessment which is subject to an appeal to the courts. As such, it cannot be subject to an obligation of proof.

*The CFI also commented on the place of practical experience in assessing distinctivness

The second argument

*Assuming that OHIM was bound by Art.6 quinquies of the Paris Convention, OHIM had not breached that article by failing to register the bottle as a CTM. The refusal to register a CTM affected neither the validity nor the protection on German territory of the earlier German national mark. Moreover, Art.6 quinquies (B)(ii) of the Paris Convention allows for the possibility of refusing to register marks based on lack of distinctive character.

The third argument

*The Paris Convention and TRIPs contain no duty to give reasons and so could not be used to found an argument based on the duty to give reasons.

*There had been no breach of the (CTM Regulation-based) duty to give reasons.

*The owner of a national mark cannot automatically claim seniority in relations to an application for a CTM covering the same sign and identical goods or services. Like other CTM applications, seniority claims must not be barred by the absolute or relative grounds for refusal. Here the Board took the German registration of the bottle into account but was not bound by it.

The fourth argument

*The mark did not differ enough from the standard shape of packaging for the goods in question to be able to act as a trade mark.

*The fact that the features characterising the mark had no technical or ergonomic function, even if it were proven, could not affect the finding of lack of distinctiveness because distinctiveness is a matter of consumer perception.

The IPKat reckons Develey was always on a hiding to nothing here. The CTM system is already well blessed with procedural requirements, so it would a surprise to find that it had slipped up in terms of procedure under international law.

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