In Illustration Yous Were Wondering ...

When other people arrive at got been wasting their banking concern vacation weekend inwards lamentable pursuits similar recolonising the Lost Continent of Ikea, the IPKat's corking friend Tibor Gold (a partner inwards Kilburn & Strode) has been at his productive best, producing the next notes on ii recent Court of First Instance cases on Community merchandise marks that arrive at got failed to larn far into English. The ii cases are

Case T-31/03 Grupo Sada, pa, SA v OHIM (Sadia, SA), CFI fourth chamber, eleven May 2005

The applicant’s CTM application inwards classes 29, 31 as well as 35 was for a composite grade made upwardly of an abstract graphic with of which were the words GRUPO as well as SADA ane inwards a higher house the other, with SADA much bigger as well as somewhat stylised. The intervener (opponent) opposed nether Art. 8(1)(b) CTMR on the footing of its before Castilian registration inwards course of written report 29 for a slightly stylised give-and-take grade ‘Sadia’. The Opposition Division allowed the opposition inwards honour of the applicant’s course of written report 29 only, a conclusion upheld yesteryear the First Board of Appeal (“BoA”).

The effectively alone solid soil of appeal to CFI was on the Art. 8(1)(b) CTMR signal (=likelihood of confusion). However, the CFI found that that solid soil had 3 sub-grounds:

(i) the BoA’s failure to accept into job organisation human relationship of the high grade of noesis of the grade yesteryear Castilian consumers;

(ii) the BoA’s misapplication of the concept of ‘global appreciation’ inwards the comparing of the marks as well as

(iii) the BoA’s failure to accept into job organisation human relationship the significance of the fact of co-existence inwards the Castilian marketplace the applicant’s 3 other Castilian registered marks, all of which are older than the opponent’s mark.

The appeal failed for the next reasons:

(i) Art. 74(1) does non permit OHIM to examine facts or arguments that arrive at got non been invoked yesteryear the parties to the proceeding.: Henkel KGaA v OHIM (LHS(UK)) (KLEENCARE) T-308/01 [2003] ECR II-3253, [2004] ETMR 1022 (74); nor volition the CFI entertain the exam of evidence, facts or arguments foremost introduced before it: Alejandro v OHIM (Anheuser-Busch) (BUDMEN) T-129/01 [2003] ECR II-2252.

(ii) The CFI did non concur with the appellant’s arguments that the BoA’s approach was unduly dissective rather than making an overall assessment. The CFI affirmed the findings of the BoA (a) that the relevant world to watch is the full general Castilian public, (b) that the goods are identical, as well as (c) that spell non ignoring the graphic chemical constituent as well as the generic give-and-take GRUPO, the dominant visual as well as phonetic elements to compare are the words SADA as well as SADIA which are the elements the average consumer volition shout out upwardly as well as which are confusably similar. The CFI cited Oberhauser v OHIM (Petit Liberto),(FIFTIES), T-104/01, [2002] ECR II-4359, [2003] ETMR 58.

(iii) It is non wholly to live excluded that inwards surely cases the co-existence inwards the marketplace of an applicant’s registered marks before than the opponent’s grade may live taken into job organisation human relationship – but alone if it is duly proved before the Office that (A) such co-existence is based on the absence of the peril of confusion on the business office of the relevant public, as well as if farther (B) the co-existing marks are identical. Here the applicant’s marks anterior to the opponent’s were non identical, nor did the applicant furnish whatever proof of the absence of the peril of confusion. Hence the BoA was correct to spend upwardly this argument.

Case T-288/03 TeleTech Holdings, Inc. v OHIM (Teletech International SA) CFI 2d Chamber, 25 May 2005

This started equally an application for part-cancellation against a registered CTM “TELETECH GLOBAL VENTURES” inwards classes 35 as well as 38 based on the applicant’s before French national registration TELETECH INTERNATIONAL, too inwards those classes. The Cancellation Division of OHIM granted the application for roughly (only) of the services inwards the attacked business office of the registration. On appeal, the BoA upheld the conclusion of the Cancellation Division inwards part. The CTM proprietor appealed to the CFI on the next grounds:

(i) Violation of the principles of co-existence as well as comparing of CTMs as well as distinctive national marks as well as signs;

(ii) Violation of the defendant’s rights of defence forcefulness as well as

(iii) Misconstruction of Art. 8(1)(b) CTMR.

Under (i) the appellant sought to rely on an allegation that “TELETECH GLOBAL VENTURES” was a well-known mark, the feel of Art. 6bis of the Paris Convention equally good equally Art. xvi of TRIPs, inwards the European Union as well as inwards a higher house all inwards France, since before the appointment of the grade owned yesteryear the applicant for cancellation. It too tried to rely on Art. 106 CTMR.

The CFI found that spell the BoA’s conclusion on this signal could arrive at got been lay meliorate as well as to a greater extent than clearly, it is soundless possible to empathize it equally stating that the allegedly well-known character of the attacked grade has no influence on the determination of the inquiry of the likelihood of confusion betwixt the compared marks. Moreover, OHIM has no mightiness or mightiness to examine the validity of an before correct invoked against a CTM inwards cancellation proceedings: Matratzen Concord v OHIM (Hukla Germany), T-6/01, [2002] ECR II-4335, [2003] ETMR 392 (31).

The CFI too dismissed the declaration of that it would live ‘absurd’ if the appellant could non convert its CTM into a French national registration on the footing that, if it is actually well-known, the appellant tin flaming perish on to purpose it and/or tin flaming base of operations a French cancellation proceeding against the applicant‘s French registration on it. The declaration founded on Art. 106 CTMR was given rattling brusque shrift equally simply non analogous as well as misconceived. Similarly rejected was the declaration based on Art. 6bis of the Paris Convention /Art. xvi of TRIPs which, equally the CFI points out, only render the possessor of a well-known grade with a correct to oppose the purpose a subsequently sign.

Under (ii), the appellant argued that if the BoA did non observe its illustration on ‘well-knownness’ established, it should arrive at got been told this as well as allowed to innovate additional material. But the CFI disagreed. OHIM was nether no such duty. The facts were that the evidence submitted yesteryear the appellant before OHIM did non constitute that its grade was well-known, (even if that were relevant to the cancellation action). The CFI relied on Art. 74 CTMR which limits OHIM’s mightiness to adjudicate alone on the parties’ arguments as well as facts submitted to it. Thus, on the KLEENCARE principle, Henkel KGaA v OHIM (LHS(UK), T-308/01 [2003] ECR II-3253, [2004] ETMR 1022 (74), the CFI found no fault with the BoA here.

Lastly, nether (iii), the declaration was alone virtually the differences betwixt the competing signs, the targeted world as well as the services beingness essentially the same. The CFI upheld the BoA’s finding that TELETECH was a coined word, with TELETECH beingness clearly dominant at the get-go of the whole, spell ‘global’, ‘international as well as ‘ventures’ were descriptive words. Though the last-mentioned did non be equally a French word, non alone does it prevarication at the – less probable to live memorised - terminate of a three-word grade but inwards this champaign the relevant world is especially exposed to Anglicisms. Hence the finding of a likelihood of confusion was affirmed.

is hugely grateful to Tibor for his sterling efforts.