Ohim Together With The International Constabulary Bottleneck

Case T-129/04 Develey Holding GmbH & Co Beteiligungs KG v OHIM is ane of Wednesday’s crop of Court of First Instance IP cases. This is a foreign case, inwards which a number of arguments based on international merchandise score police conventions failed to teach off the ground.

Develey applied to register a three-dimensional sign inwards the shape of a bottle equally a CTM for diverse foodstuffs too drinks inwards Classes 29, xxx too 32. The bottle had a sparse neck, a flattened too broad trunk which was bulbous, its lower constituent finished inwards a gyre too it had depressions arranged symmetrically on the signs of the trunk of the bottle. Develey already had a High German merchandise score for this bottle. The examiner too the OHIM Board of Appeal found that the score lacked distinctiveness since it did non differ significantly from the normal shapes available on the marketplace position inwards a means that would give it merchandise score 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 half-dozen quinquies (A)(1) of the Paris Convention since OHIM deprived the before national registration of protection; (iii) OHIM had breached Article 73 of Regulation 40/94, Article half-dozen quinquies of the Paris Convention too Article 2(1) of TRIPs, since it failed sufficiently to examine the before national registration too (iv) breach of Article 7(1)(b) of Regulation 40/94, since OHIM failed to recognise the distinctive graphic symbol of the applied-for score too the fact that its features had no technical function.

Art.6 quinquies of Paris reads equally follows:

A(1) Every trademark duly registered inwards the Earth of origin shall hold upward accepted for filing too protected equally is inwards the other countries of the Union, dependent champaign to the reservations indicated inwards this Article. Such countries may, before proceeding to terminal registration, postulate the production of a certificate of registration inwards the Earth of origin, issued past times the competent authority. No authentication shall hold upward required for this certificate.

(2) Shall hold upward considered the Earth of origin the Earth of the Union where the applicant has a existent too effective industrial or commercial establishment, or, if he has no such institution inside the Union, the Earth of the Union where he has his domicile, or, if he has no habitation inside the Union but is a national of a Earth of the Union, the Earth of which he is a national.
B Trademarks covered past times this Article may hold upward neither denied registration nor invalidated except inwards the next cases:

(i) when they are of such a nature equally to infringe rights acquired past times 3rd parties inwards the Earth where protection is claimed;

(ii) when they are devoid of whatever distinctive character, or consist simply of signs or indications which may serve, inwards trade, to designate the kind, quality, quantity, intended purpose, value, house of origin, of the goods, or the fourth dimension of production, or direct maintain conk customary inwards the electrical current linguistic communication or inwards the bona fide too established practices of the merchandise of the Earth where protection is claimed;

(iii) when they are opposite to morality or populace social club and, inwards particular, of such a nature equally to deceive the public. It is understood that a score may non hold upward considered opposite to populace social club for the sole argue that it does non conform to a provision of the legislation on marks, except if such provision itself relates to populace order.

This provision is subject, however, to the application of Article 10bis.

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

The CFI dismissed the appeal.

The origin argument

*Art.6 quinquies of the Paris Convention was irrelevant inwards these proceedings. That article deals amongst the protection too registration of merchandise marks inwards to a greater extent than or less other State which is a signatory to the Paris Convention too contains no provisions concerning the burden of proof inwards CTM proceedings.

*The exam nether the absolute grounds is an objective too impartial legal assessment which is dependent champaign to an appeal to the courts. As such, it cannot hold upward dependent champaign to an obligation of proof.

*The CFI also commented on the house of practical sense inwards assessing distinctivness

The instant argument

*Assuming that OHIM was saltation past times Art.6 quinquies of the Paris Convention, OHIM had non breached that article past times failing to register the bottle equally a CTM. The refusal to register a CTM affected neither the validity nor the protection on High German territory of the before High 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 3rd argument

*The Paris Convention too TRIPs comprise no duty to give reasons too hence could non hold upward used to found an declaration based on the duty to give reasons.

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

*The possessor of a national score cannot automatically claim seniority inwards relations to an application for a CTM roofing the same sign too identical goods or services. Like other CTM applications, seniority claims must non hold upward barred past times the absolute or relative grounds for refusal. Here the Board took the High German registration of the bottle into trouble organization human relationship but was non saltation past times it.

The quaternary argument

*The score did non differ plenty from the criterion shape of packaging for the goods inwards inquiry to hold upward able to human activity equally a merchandise mark.

*The fact that the features characterising the score had no technical or ergonomic function, fifty-fifty if it were proven, could non impact the finding of lack of distinctiveness because distinctiveness is a affair of consumer perception.

reckons Develey was ever on a hiding to naught here. The CTM arrangement is already good blessed amongst procedural requirements, hence it would a surprise to honour that it had slipped upward inwards price of physical care for nether international law.