ROSSI RECOMMENDATION FROM AG KOKOTT; WEISSE SEITEN RULING

Rossi appeal: Kokott says "no"

Back in March 2005, in Case T-169/03, Sergio Rossi SpA v Office for Harmonisation in the Internal Market, an application was made to register as a Community trade mark the word mark SISSI ROSSI for goods in class 18 (leather goods and bags, right). Sergio Rossi opposed, arguing that there was a likelihood of confusion with his earlier Community and international trade marks for MISS ROSSI, registered for goods within class 25 (footwear, below left). Reversing the Opposition Division, the Board of Appeal found that the differences between the goods outweighed their few common points and concluded that there was no likelihood of confusion within Art.8(1)(b).

Sergio Rossi's appeal to the CFI failed since the goods -- though complementary -- were too dissimilar and their intended purposes were different: shoes were used to dress feet while bags were used for carrying objects. It followed that the goods were not interchangeable and therefore not in competition. Also, while the marks bore a resemblance in some respects, they shared the common Italian surname Rossi which was not prominent in the marks. The words ‘Sissi' and ‘Miss', which were the dominant elements of the marks, had only an average, if not slight, degree of similarity. This being so, the Board of Appeal was right to hold that there was no likelihood of confusion.

This morning Juliane Kokott has advised the European Court of Justice to dismiss the appeal in Case C-214/05 Sergio Rossi SpA v OHIM, Sissi Rossi Srl (click here for full text, which is not available in English). If the Kat has missed anything of genuine significance on account of his linguistic incompetence, can some kind reader put him out of his mystery ...


Is 'white paper' descriptive of paper?

This morning also saw the outcome of Case T-322/03 Telefon & Buch v OHIM, Herold Business Data, in which the Court of First Instance dismissed a Community trade mark proprietor's appeal against a decision to invalidate in part a registration of the words WEISSE SEITEN ("White paper") in respect of goods that included paper.

Right: white paper, somewhat dog-eared ...

This decision raises various interesting issues involving longstanding use by the proprietor and whether the words WEISSE SEITEN are a term used in the relevant trade circles, as well as what happens when an OHIM Board of Appeal decision is at odds with an Austrian court ruling as to the linguistic habits of Austrian consumers. On this last point the CFI had this to say:

" The first plea, alleging a conflict between the contested decision and the Austrian decision

Arguments of the parties

26 The applicant submits that the contested decision is inconsistent in so far as it is based on an assessment of the Austrian public which differs from that made by the Austrian national authorities in the decision of the Oberster Patent- und Markensenat of 22 September 1999.

27 OHIM points out that it is not legally obliged to ensure that its decisions are consistent with national decisions. In addition, the facts to be assessed were not identical since the national authorities based their decision on linguistic habits in Austria, whereas OHIM had to take linguistic habits in the internal market as a whole into account, and, therefore, also those in Germany.

28 In addition, OHIM draws attention to the fact that the decision of the Oberster Patent- und Markensenat confirmed that the Austrian mark WEISSE SEITEN was invalid in so far as it related to ‘paper and printed matter’ due to its descriptive character (in the sense of ‘white-coloured pages’), and that, consequently, the decisions were consistent in that respect.

29 The intervener points out that OHIM is under no obligation to endorse the assessment of a national authority. Therefore, the decision of 22 September 1999 is not relevant to determination of the perception of the mark in dispute by the Austrian public.

Findings of the Court

30 OHIM is not obliged to base its assessment of the perception that the relevant public has of the mark in dispute on a national decision. The Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system ... The registrability of a sign as a Community trade mark must therefore be assessed by reference only to the relevant Community rules. OHIM and, if necessary, the Community judicature are not bound by a decision given in a Member State, or a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised under First Council Directive 89/104 ... or in a country belonging to the linguistic area in which the word sign in question originated ...

31 Therefore, the fact that the contested decision might conflict with the Austrian decision cannot constitute an infringement of the relevant Community rules. The Court will examine in the context of the other pleas whether OHIM correctly analysed the perception of the relevant public in the present case".

The IPKat thinks the CFI has got this right, and expects the ECJ to uphold the decision in the event that this point is appealed. Merpel adds, it's a bit like the conflict between the CFI and the German courts in the ZIRH/SIR case, which is already on appeal (see IPKat comment on AG's Opinion here).

More on white paper here and here.