Fennel and I have a good day in Luxembourg

Not content with deluging the IP public with Community trade mark decisions yesterday, the Court of First Instance of the European Communities is hard at it again today.

First today the Kat considers Case T‑167/05, Grether AG v Office for Harmonisation in the Internal Market (Crisgo (Thailand) Co. Ltd intervening). Crisgo applied to register a funny little figurative mark (top right) as a Community trade mark for various cosmetic items in Class 3. Grether opposed, citing its earlier registered trade mark FENJAL for identical goods. The Opposition Division and Board of Appeal both rejected the opposition in its entirety: however identical the goods were, and however strong was FENJAL's reputation, the marks were simply not sufficiently similar to spark off a likelihood of confusion. Grether appealed - but to no avail. Said the CFI:

"66 While the visual comparison of the conflicting signs admittedly reveals that their first three letters and their final letter are the same, the Board of Appeal rightly found that each of the signs at issue produces a different visual impression. The slight visual similarities due to the sequence of letters ‘fen’ and ‘l’ are offset by the difference in the configuration of the signs as a whole.

67 ... the letters ‘nn’ in the middle of the mark FENNEL are in different graphics from the other letters, which attracts the consumer’s attention. Next, whereas the overall visual impression of the earlier sign is determined exclusively by the single word element ‘fenjal’, that created by the trade mark applied for is a result of the combination of two elements, that is, the word element and the figurative element of which it is composed.

68 Even if it were accepted ... that the figurative element is purely decorative in relation to the word element of the trade mark applied for, the figurative element is much more appropriate than the word element for the purpose of distinguishing the goods covered and capturing the consumer’s attention, and the word element ‘fenjal’ alone in the earlier mark is, in any event, sufficiently distinct from the sign applied for that, visually, the differences prevail over the similarities in the perception of the consumer. That conclusion is not altered by the fact, relied on by the applicant, that the public’s attention will focus more on the first three letters and the last letter of the signs than on the letters ‘ja’ and ‘ne’.

– Aural similarity

...
70 ... it cannot be accepted ... that there is some likelihood of confusion in Germany, since the word ‘fenjal’ will be pronounced in that Member State with the emphasis on the second vowel, whereas the word ‘fennel’ will be pronounced with the emphasis on the first vowel.

– Conceptual similarity

71 ... neither of the words in question has any meaning in the majority of the Member States. While there may be doubts with regard to the relevant English-speaking public, for whom the word ‘fennel’ may, possibly, refer to a plant or a vegetable, that fact does not cast doubt on the lack of similarity between the signs at issue".

Grether also felt that the Board of Appeal had misassessed the level of attention that the relevant German consumer would give to the marks when making a purchase decision. On that issue the CFI had this to say:

"105 ... [Grether] cannot criticise the Board of Appeal for having taken into consideration ... the presumed perception of the relevant public – in particular with regard to the consumer’s degree of attention, the manner in which the goods are bought or the meaning of the signs in question – as it appears from the facts and evidence put forward before it by [Grether].

106 Moreover, the Board of Appeal also based its analysis, essentially, on facts derived from generally acquired practical experience of the marketing of cosmetics, namely compact powder, lipstick, eye-shadow, eye-liner, blusher, nail polish and mascara, since those facts are likely to be known by consumers of those products.

107 It follows that the Board of Appeal did not ... base its decision on new facts and arguments".

The IPKat is curious to know precisely what are the parameters of "generally acquired practical experience of the marketing of cosmetics", and how this presumably amorphous body of knowledge is identified and brought to bear on the facts of individual cases. Merpel says, but isn't it about time that parties to contentious matters before OHIM were told to get real and accept the self-evident?


Today's second decision is Case T‑441/05, IVG Immobilien AG v Office for Harmonisation in the Internal Market. This was an application to register as a Community trade mark a figurative mark consisting of the letter 'I' (illustrated, right) for services in Classes 35, 36, 37, 39, 42 and 43. The examiner refused registration on the ground that the mark was devoid of any distinctive character in relation to all the services covered by the application for registration. In his view,

"since they have no specific and striking graphic design, ordinary and simple signs, such as single letters, cardinal numbers and basic geometric forms, were not distinctive".

IV appealed, arguing that the form of the claimed mark differed from the standard capital letter ‘i’ in the Times New Roman character font, given its colour and the fineness and length of the transversal horizontal strokes at its head and base. That appeal was dismissed and IVG appealed to the CFI.

Allowing the appeal, the CFI said

"45 The Court finds .. the Board of Appeal merely took the view that the claimed mark was not capable of indicating the commercial origin of the services designated in that the two transversal strokes of the symbol submitted for registration and its royal blue colour, to which a primarily decorative purpose was attributed, were not sufficient to attract the attention of the normally attentive observer.

46 In order to reach such a conclusion, the Board of Appeal took as its basis the fact that the claimed mark lacked notable specific graphic features in comparison to the standard Times New Roman character font. ...

47 By thus focussing the assessment of the distinctive character of the claimed mark from the outset on the configuration of its colour and on the importance of the graphic differences which it allegedly showed in relation to the equivalent symbols of the standard Times New Roman character font, the Board of Appeal implicitly but necessarily took the view, in breach of Article 4 of Regulation No 40/94, that a printing symbol forming part of a standardised character font did not of itself have the minimum degree of distinctiveness required by Article 7(1)(b) to be eligible for registration as a Community trade mark.

48 To that extent ... the Board of Appeal deprived of all practical application the principle that Article 7(1)(b) of Regulation No 40/94 makes no distinction between different types of signs with regard to the requirement for distinctiveness, despite the fact that that principle was recalled in paragraph 9 of the contested decision.

49 Furthermore ... a sign’s lack of distinctive character, within the meaning of Article 7(1)(b) of Regulation No 40/94, cannot arise merely from the finding that it does not look unusual or striking ....

50 Registration of a sign as a Community trade mark is not subject to a finding of a specific level of creativity or imaginativeness on the part of the proprietor of the trade mark ..., but to the ability of the sign to distinguish the goods or services of the applicant for the trade mark from goods or services offered by competitors ....

51 A sign lacking stylised graphic elements can even be more easily and instantly memorised by the relevant public and can enable it to repeat a positive purchasing experience inasmuch as the sign is not already commonly used, as such, for the goods and services in question ...

52 By deducing, from the absence of notable specific graphic features in comparison to a standard character font, that the claimed mark lacked distinctiveness the Board of Appeal thus incorrectly applied Article 4 and Article 7(1)(b) of Regulation No 40/94".

This would have been sufficient to bury the finding of the Board of Appeal, but the CFI did not stop there. It continued:

"54 Second ... the Board of Appeal merely added ... that the sign was devoid of any significance which could make it distinctive.

54 In that regard, the Board of Appeal stated that, in the absence of other indications of a link between the claimed mark and a particular undertaking, the relevant public would not perceive in the sign in question the identification of the commercial origin of the services covered by the Community trade mark application.

55 However, to have the minimum degree of distinctiveness required by Article 7(1)(b) of Regulation No 40/94, the claimed mark must merely appear, a priori, capable of enabling the relevant public to identify the origin of the goods or services covered by the Community trade mark application and to distinguish them from those of other undertakings, without necessarily needing to have a particular meaning, since a totally arbitrary sign can be distinctive.

56 In the present case, the Board of Appeal did not state why the sign’s lack of significance precluded identification of the property construction, administration and management services offered by the applicant.

57 ... since it is made up of the letter ‘i’, the claimed mark is the same as the initial letter of the word ‘immobilier’, which, in several of the official languages of the Community, designates the sector of activities including the services in question.

58 In those circumstances, the Board of Appeal should, at the very least, have considered the question whether the sign under examination could not evoke, without perhaps describing it for the purposes of Article 7(1)(c) of Regulation No 40/94, the type of services designated.

59 By thus inferring from the claimed mark’s lack of significance that it was incapable of identifying the commercial origin of the services in question, the Board of Appeal incorrectly applied Article 7(1)(b) of Regulation No 40/94.

60 The Board of Appeal was therefore incorrect to base its refusal to register the claimed mark on its lack of notable specific graphic features and significance without first examining, by taking into consideration all the relevant factors relating to the specific facts of the case, whether that sign was in fact capable of distinguishing, in the minds of the target public, the services supplied by the trade mark applicant from those of its competitors".

But this was not the end. Piling more misery on to the Fourth Board of Appeal, who must have felt intuitively confident that IVG's sign was not registrable material, the CFI added:

"61 ... the applicant is an undertaking specialising in property construction, administration and management and that it supplies the services covered by its Community trade mark application to professional or private consumers.

62 In the light of the specific nature and high price of the transactions which they generally involve, in any event those services are aimed at an informed public, whose level of attention is higher than that of the average consumer, who is reasonably well informed and reasonably observant and circumspect, in purchases of everyday consumer goods and services, as the Board of Appeal found.

63 The level of attention of the relevant public is likely to vary according to the category of goods or services proposed and consumers may constitute a very attentive public where, as in the present case, their commitments can be relatively significant and the services supplied relatively technical ...

64 The Board of Appeal was therefore incorrect to take as the relevant public the average consumer who is reasonably well informed and reasonably observant and circumspect, without taking into consideration the fact that the consumer’s level of attention, including that of the average consumer, is likely to vary according to the category of goods or services in question ...".

The IPKat thinks that the third point is perhaps the most important - never lose sight of the nature of the relevant consumer. The more specialist (or educated) the market, the more de minimis can be the level of distinctiveness that will support a trade mark registration. Merpel adds, did you know that you'll get nearly 4 billion hits if you do a Google search of the letter "I". What does that say for its potential as a metatag?

I Claudius here
Withnail and I here
I and I here