Healthy diet of cases from the CFI

Yesterday the Curia website posted Case T‑425/03, AMS Advanced Medical Services GmbH v Office for Harmonisation in the Internal Market, American Medical Systems, Inc., an appeal against an OHIM Board of Appeal decision to annul the Opposition Division's ruling and uphold an opposition in part, based on the earlier word mark AMS, to an application to register a figurative mark containing the letters AMS (right) as a Community trade mark for various pharmaceutical, medical and care-related goods and services in Classes 5, 10 and 42. The opponent's mark was registered in Class 10 for 'surgical, medical and veterinary apparatus and instruments; suture materials; medical devices for the control of urological disorders and impotence; prosthetic articles; penile prostheses; urinary prostheses; artificial sphincters; parts and fittings'.

The application was only allowed in respect of ‘food for babies; preparations for destroying vermin, fungicides [and] herbicides’, since they could be regarded as sufficiently remotely connected with the goods protected by the earlier mark. However, as regards the goods and services in respect of which it upheld the opposition, the Board of Appeal found essentially that, like the goods protected by the earlier mark, those goods and services all concerned the medical field and were intended to cure physical ailments with the result that there was a likelihood of confusion in the light of their purpose and the similarity of the signs at issue. The Board of Appeal finally rejected a plea raised by the applicant in the proceedings before it, alleging that the oppnent's mark had not been used in the Community, on the ground that it had not been raised in due time before the Opposition Division.

The CFI yesterday dismissed the applicant's appeal. It had nothing spectacularly exciting to say about the similarity of goods and services and the comparison of marks. However, on the admissibility of submissions before the CFI in respect of matters that were not disputed before the Board of Appeal, the court had this to say:
"28 ... where it is based on Article 8(1)(b) of Regulation No 40/94, opposition to the registration of a Community trade mark requires OHIM to adjudicate on whether the goods and services covered by the conflicting marks are identical or similar and whether those marks are similar or not ....

29 Consequently, the fact that the applicant did not dispute, before the Board of Appeal, the similarity of the conflicting marks cannot in any way divest OHIM of the power to adjudicate on whether those marks were similar or identical. Likewise, therefore, that fact cannot deprive the applicant of the right to challenge, in the factual and legal context of the dispute before the Board of Appeal, the findings of that body on this point ..."
The IPKat thinks this must be right, both in terms of law and in terms of common sense.

Also decided yesterday was Case T-28/05 Ekabe International v OHIM - Ebro Puleva (OMEGA3). To the IPKat's sorrow and frustration, this ruling is available only in Bulgarian, French, Latvian, Lithuanian, Slovene, Finnish and Swedish. It looks to the Kat as though Ekabe sought to register as a Community trade mark the sign depicted on the left, but that Ebro Puleva opposed, citing its earlier rights in the trade mark PULEVA-OMEGA3. The rest, alas, is speculation on which the IPKat would appreciate a little gentle guidance (please email him here or post an explanation below).

What is omega 3 here
Make your own omega 3 mayonnaise with flax oil here
Healthy diet of cases from the CFI Healthy diet of cases from the CFI Reviewed by Jeremy on Friday, October 19, 2007 Rating: 5


  1. Your guess in the Ekabe case is correct. Ebro Puleva won on the basis that the two trademarks are too similar.

  2. The mind boggles at the thought of a trademark used only for baby food and "preparations for destroying vermin, fungicides [and] herbicides"...

  3. Flax Seed Oil? It has been widely available for many years but is also called Linseed Oil. The omega 3 bonds assist it to harden in air or exposed to UV so good in paints.

  4. Tibor Gold has emailed the Kats to report: "Not revolutionary. CFI upholds BoA that a figurative mark containing as its dominant element ‘omega-3’ – which, amazingly, is not found to be known to the Spanish public – is confusable with an earlier Spanish mark puleva-omega3. The reasoning is based on Medion without once mentioning it: in the composite Spanish mark the public sees omega3 as having a distinct role equal to puleva…".

    Many thanks, Tibor!


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