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Means of Communication, Time Limits

Guidelines for Examination in the Office, Part A, General Rules Page 1

FINAL VERSION 1.0 01/08/2015

GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART A

GENERAL RULES

SECTION 1

MEANS OF COMMUNICATION, TIME LIMITS

Means of Communication, Time Limits

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Table of Contents

1 Introduction................................................................................................ 3

2 Procedures for Filing and for Communication with the Office.............. 3

3 Notification and Communication of Documents..................................... 3 3.1 Communication to the Office.....................................................................4

3.1.1 By telecopier (fax)........................................................................................... 4 3.1.2 By electronic means ....................................................................................... 5 3.1.3 By post, courier service or personal delivery.................................................. 5

3.2 Notification by the Office ...........................................................................5 3.2.1 Notification by telecopier ................................................................................ 6 3.2.2 Notification by post ......................................................................................... 6 3.2.3 Notification by deposit in a post box at the Office .......................................... 7 3.2.4 Notification by hand delivery........................................................................... 7 3.2.5 Notification via the Office’s official website..................................................... 7 3.2.6 Notification by public notification .................................................................... 7

3.3 Addressees.................................................................................................8

4 Time Limits................................................................................................. 8 4.1 Time limits specified by the Office............................................................8

4.1.1 Length of the time limits specified by the Office ............................................. 9 4.1.2 Expiry of time limits......................................................................................... 9 4.1.3 Extension of time limits................................................................................. 10 4.1.4 Continuation of proceedings......................................................................... 11 4.1.5 Restitutio in integrum .................................................................................... 12

Means of Communication, Time Limits

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1 Introduction

This part of the Guidelines includes those provisions that are common to all proceedings before the Office in trade mark matters, except appeals.

In the interests of efficiency and i n order to prevent parties encountering different practices, the Office applies procedural rules consistently.

Proceedings before the Office can be classified into two broad types: ex parte proceedings, which involve only one party, or inter partes proceedings, in which two or more parties are in conflict.

The first category comprises, in particular, applications for registration or renewal of a Community trade mark, transfer-related entries in the Register, licences, levy of execution or bankruptcy, and seniority and conversion proceedings.

The second category includes opposition proceedings and cancellation proceedings (revocation or declaration of invalidity of a registered Community trade mark).

2 Procedures for Filing and for Communication with the Office

Article 25 CTMR Rule 79 and Rule 83 CTMIR

An application for a Community trade mark (CTM) may be filed directly with the Office or through a national office of a Member State of the European Union, including the Benelux Trade Mark Office.

All other documents may only be filed directly with the Office.

All documents may be sent to the Office by post or courier services, handed i n personally at the Office’s reception desk (Avenida de Europa, 4, 03008 Alicante) during Office opening hours (Monday to Friday, 08:30 – 13:30 and 15:00 – 17:00), or sent by fax. Applications for CTMs, oppositions and renewals may also be filed electronically via the Office’s official website. As part of its e-business strategy, the Office will progressively make electronic communication available for filing other documents in all types of proceedings.

The Office has made various forms available to the public, in all the official languages of the EU. With one exception, their use is not mandatory but strongly recommended. The exception is when filing an i nternational application or subsequent designation under the Madrid Protocol, for which either the World Intellectual Property Organization’s (WIPO) MM 2 or MM 4 or the Office’s EM 2 or EM 4 form must be used. All these forms can be downloaded from the Office’s official website.

3 Notification and Communication of Documents

The CTMIR distinguishes between documents originating from the parties and addressed to the Office and notifications issued by the Office.

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A document’s date of notification or communication is the date on which that document is received or is deemed to be r eceived by the addressee (including the Office) (judgment of 30/01/2014, C-324/13 P, ‘Patricia Rocha’, para. 43). Exactly when receipt is deemed to have taken place will depend on the method of notification or communication.

3.1 Communication to the Office

Rule 5(1), Rule 79, Rule 79a, and Rules 80 and 82 CTMIR Decision No EX-13-02 of the President of the Office

3.1.1 By telecopier (fax)

Where a document is faxed to the Office, the original should be signed so that the fax received by the Office bears the facsimile of the signature. If the fax is not signed, the Office will invite the party concerned to do so within a specified deadline. If the document is not signed within that time, the application or request will be declared inadmissible, or the document will not be taken into account, as the case may be.

However, if the fax was generated electronically by computer (‘electronic fax’), the indication of the name of the sender is deemed to be equivalent to the signature.

It is not necessary to follow this up with a confirmation of the fax by mail.

The Office will acknowledge receipt of a fax only in the cases expressly specified by the CTMIR, namely when a CTM application is filed. However, if the communication is incomplete or illegible, or the Office has reasonable doubts as to the accuracy of the transmission, it will advise the sender and invite it to retransmit the communication by fax or to submit a signed original of the document in question to the Office by post, personal delivery or any other means within a specified deadline. If the retransmission is complete, the date of receipt will be c onsidered to be the date of the first transmission, except for the purposes of establishing a filing date for a CTM application. Otherwise, the Office will not take the transmission into account or will consider only the received and/or legible parts (decision of 04/07/2012, R 2305/2010-4 – ‘Houbigant/PARFUMS HOUBIGANT PARIS et al.’).

For further information on the filing date, see the Guidelines, Part B, Examination, Section 2, Formalities.

Where a document in colour is to be transmitted, the document can be sent by fax and the coloured original filed within one additional month unless provided otherwise by the CTMR. In this case, the date of receipt of the coloured original is deemed to be the date the Office receives the fax, including for the purposes of obtaining a filing date for a CTM application. The time of receipt is the local time in Alicante (Spain) at which the Office received the fax.

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3.1.2 By electronic means

In accordance with Rule 82 CTMIR, if a CTM application is filed using e-filing, or a communication is sent to the Office by any electronic means, the indication of the name of the sender is deemed to be equivalent to the signature.

The Decision of the President of the Office is decisive in determining whether, to what extent and under what technical conditions, communications may be sent to the Office by electronic means. Particular reference is made to Decision No EX-13-2, according to which the time of receipt of requests, communications or documents submitted electronically via the official OHIM website is the local time in Alicante (Spain) when such receipt was validated.

Where an electronic communication is incomplete or illegible, or the Office has reasonable doubts as to the accuracy of the transmission, Rule 80(2) CTMIR applies mutatis mutandis.

3.1.3 By post, courier service or personal delivery

Documents sent by post, courier service or personal delivery should be addressed to the Office at the address indicated in the explanatory notes accompanying the forms provided by the Office.

Documents sent by post, courier service or personal delivery must bear an original signature. If a document sent to the Office is not signed, the Office will invite the party concerned to do so within a specific deadline. If the document is not signed within that time, the application or request will be declared inadmissible, or the document will not be taken into account, as the case may be.

The date of receipt is the date on which the Office receives the communication. The time of receipt is the local time in Alicante (Spain).

For further information on copies of the documents submitted, see the Guidelines, Part C, Opposition, Section 1, Procedural matters, 4.2 Substantiation.

3.2 Notification by the Office

Rules 55, 61-69 CTMIR Decision No EX-97-1 of the President of the Office Decision No EX-05-6 of the President of the Office Decision No EX-13-2 of the President of the Office

Written communications from the Office to the party or parties to proceedings will be ‘notified’. A document is considered to be notified when it has been received or is deemed to have been received by the addressee, irrespective of whether the addressee has been advised of this. Consequently, the date of notification of a document is the date on which that document is made accessible to or has reached the addressee and not the date on which it was sent or the date on which the person to whom it was addressed actually learned of the notification. However, exactly when receipt is deemed to take place will depend on the method of notification.

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The Office can freely choose the most appropriate means of notification (Rule 61(3) CTMIR), apart from public notification, although some means of notification require the party’s prior consent.

In practice, wherever feasible and provided that the number of pages to be transmitted is not excessively high, the Office will always opt for notification by electronic means, if available.

If the proper notification procedure has been followed, the document is deemed to have been notified unless the recipient can prove that it either did not receive the document at all, or received it late. If this is proved, the Office will re-notify the document(s) (judgment of 13/01/2011, T-28/09, ‘Pine Tree, para. 32). Conversely, where the proper notification procedure was not followed, the document will still be considered notified if the Office can prove that the document actually reached the recipient.

Any communication or notification from the Office shall indicate the department or division of the Office and the name(s) of the official(s) responsible. These documents have to be signed by the official(s) or, if not, bear the Office’s printed or stamped seal. For documents transmitted by telecopier, additional information is provided under paragraph 3.2.1 below.

3.2.1 Notification by telecopier

The Office may use notification by telecopier if the party has indicated a fax number, the exception being notifications that include colour elements.

Notification will be dee med to have taken place on the date on which the recipient’s telecopier receives it. The Office keeps fax logs so that it can prove the transmission time and content. In the absence of any evidence to the contrary or information that casts doubt on the correct transmission of the notification, the date of receipt of a fax may be es tablished by the Office transmission report (judgment of 13/01/2011, T-28/09, ‘Pine Tree’, para. 32).

Where documents are transmitted by telecopier, according to Decision No EX-97-1 of the President of the Office, the name of the department or division stated in the letterhead, together with the name of the official(s) indicated at the end of the document, is considered sufficient identification.

3.2.2 Notification by post

The procedure for notification by post will depend on the nature of the document notified.

If the addressee has a place of business or domicile within the EU or has appointed a professional representative (as defined in the Guidelines, Part A, General Rules, Section 5, Professional Representation), decisions subject to a deadline for appeal, summonses and other documents as determined by the President of the Office will be notified by registered post with recorded delivery.

Where the recipient’s address is not in the EU or the addressee has not appointed a professional representative, or for any other document to be notified, the Office will send the document by post.

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Notification will be deemed to have taken place 10 days after the document was posted. The recipient can only rebut this presumption by proving that it did not receive the document or that it received it later. Indications giving rise to reasonable doubt about correct receipt are considered to be s ufficient proof (judgment of 25/10/2012, T-191/11, ‘Miura’, para. 34). In the event of a dispute, the Office must establish that the notification reached its destination or establish the date on which it was delivered to the addressee.

Notification by registered letter will be deemed to have been effected even if the addressee refuses to accept the letter.

3.2.3 Notification by deposit in a post box at the Office

The Office may notify addressees who maintain a post box at the Office by depositing the notified document therein. The date of deposit will be recorded by the Office.

Notification will be deemed to take place five days after the document has been deposited.

3.2.4 Notification by hand delivery

The Office may also notify the addressee by delivering the document by hand if the addressee is present at the Office in person, but this method of notification is an exception. A copy of the document showing a signed and dated acknowledgement of receipt by the addressee will be kept in the file.

3.2.5 Notification via the Office’s official website

Pursuant to Decision No EX-13-2 of the President of the Office of 26/11/2013, notification may also be made via the Office’s official website if the holder of an electronic account with the Office has accepted this means of notification. In this case, notification consists of placing the electronic document in the holder’s inbox. This date will be indicated in the holder’s inbox and will be recorded by the Office (decision of 17/01/2011, R 0956/2010-4 – ‘DURAMAXX/DURAMAX’).

The document is deemed to have been notified five days after being placed in the holder’s inbox irrespective of whether the recipient actually opened and read it (Article 4(4) of the Decision of the President EX-13-2).

3.2.6 Notification by public notification

Public notification will be us ed for all notifications where the addressee’s address is unknown or where a notification by post has been returned to the Office after at least one failed attempt.

This relates primarily to post returned to the Office by the Post Office marked ‘not known at this address’ and post that has not been claimed by the addressee.

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Public notifications will be published on t he Office’s website. The doc ument will be deemed to have been notified one month after the day on which it was posted on the internet.

3.3 Addressees

Rules 67 and 77 CTMIR Articles 92 and 93 CTMR

If a p rofessional representative has been dul y appointed, the Office will send all notifications to the representative (judgments of 12/07/2012, T-279/09, ‘100% Capri’, and of 25/04/2012, T-326/11, ‘BrainLAB’). ‘Duly appointed’ means that the representative is entitled to act as such and has been properly appointed, and that no general obstacle exists to preclude representation by that person, such as illicit representation of both parties in an inter partes proceeding. Filing an authorisation is not required in order to receive Office notifications. For further details see the Guidelines, Part A, General Rules, Section 5, Professional Representation.

Any notification addressed to the representative will have the same effect as if it had been addressed to the person represented. Similarly, any communication addressed to the Office by a representative will be considered to have originated from the person it represents.

4 Time Limits

Rules 70-72 CTMIR

Time limits before the Office can be divided into two categories:

• those laid down by the CTMR or CTMIR, which are therefore mandatory;

• those specified by the Office, which are therefore not mandatory and c an be extended under certain circumstances.

4.1 Time limits specified by the Office

Time limits are an essential tool for conducting orderly and reasonably swift proceedings. They are a matter of public policy and rigorous compliance with them is necessary to ensure clarity and legal certainty.

The Regulations foresee three measures that mitigate the rigorous application of the principle of strict observance of time limits (deadlines), depending on whether they are still running or have expired.

If the time limit is still running, the party may request an extension of the time limit pursuant to Rule 71(1) CTMIR.

If the time limit has expired, the party who has missed it still has two possible courses of action: it can either seek continuation of proceedings (pursuant to Article 82 CTMR),

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which only requires meeting certain formal requirements, or it can request restitutio in integrum (pursuant to Article 81 CTMR), which requires meeting formal and substantive requirements (such as showing all due care).

Additional information is provided under paragraphs 4.1.4 and 4.1.5 below.

4.1.1 Length of the time limits specified by the Office

With the exception of the time limits expressly specified in the CTMR or CTMIR, the time limits specified by the Office, when the party concerned has its domicile or its principal place of business or an establishment within the European Union, may not be less than one month or longer than six months. When the party concerned does not have its domicile or principal place of business or an establishment within the EU, the time limits may not be less than two months or longer than six months. The general practice is to grant two months.

For further information, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.

4.1.2 Expiry of time limits

Where the Office sets a time limit in a notification, the ‘relevant event’ is the date on which the document is notified or deemed notified, depending on the rules governing the means of notification.

Where a time limit is expressed in months, it will expire in the relevant subsequent month on the same day as the day on which the ‘relevant event’ occurred.

For example, if the Office sets a two-month time limit in a communication which is notified by fax on 28 June, the time limit will expire on 28 August. It is immaterial whether the ‘relevant event’ occurred on a working day, a holiday or a Sunday; that is relevant only for the expiry of the time limit.

Where the relevant subsequent month has no day with the same number or where the day on which the event occurred was the last day of the month, the time limit in question will expire on the last day of that month. A two-month time limit specified in a notification on 31 July will therefore expire on 30 September. Similarly, a two-month time limit set in a notification on 30 June will expire on 31 August.

Any time limit will be d eemed to expire at midnight on t he final day (local time in Alicante (Spain)).

A time limit that expires on a day on which the Office is not open for receipt of documents or on which ordinary post is not delivered in the locality in which the Office is located (Saturdays, Sundays and publ ic holidays) will be extended to the first working day thereafter. For this purpose, the President of the Office determines the days on w hich the Office is closed before the start of each calendar year. The extension is automatic but it applies only at the end o f the time limit (decision of 12/05/2011, R 0924/2010-1 – ‘whisper power-WHISPER’).

In the event of a general interruption to the postal service in Spain or to the Office’s connection to authorised electronic means of communication, any time limit that

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expires during that period will be extended to the first working day after the period of interruption. These periods will be determined by the President of the Office; the extension will apply to all parties to the proceedings.

In the event of an exceptional occurrence (strike, natural disaster, etc.) causing a disruption to the running of the Office or a serious impediment to its communication with the outside world, time limits may be extended for a period determined by the President of the Office.

4.1.3 Extension of time limits

An extension of the time limits may be granted if the party concerned makes the request before the original time limit expires.

In ex parte proceedings before the Office, if a request is made for an extension before the time limit expires, then a further period should be allowed, depending on the circumstances of the case, but not exceeding six months.

For the rules applicable to the extension of time limits in inter partes proceedings (i.e. where there are two or more parties involved, such as in opposition, invalidity and/or revocation proceedings), see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.

Unless otherwise provided for either in the Regulations or in the specific paragraphs in this Guideline, as a general rule any initial request for an extension that is received in time will always be granted, irrespective of the explanation given by the party requesting it. However, any subsequent request for an extension of the same time limit will be r efused unless the party requesting it can explain and j ustify the ‘exceptional circumstances’ that (a) prevented it from carrying out the required action during the previous two periods (i.e. the original time limit plus the first extension) and (b) still prevent the requester from carrying it out, so that more time is needed.

Examples of justifications that can be accepted:

• ‘Evidence is being gathered from distribution channels/all our licensees/our suppliers in several Member States. So far, we have gathered documents from some of them but, due to the commercial structure of the company (as shown in the document enclosed), we have only recently been able to contact the rest’.

• ‘In order to show that the mark has acquired distinctiveness through use we started carrying out market research at the beginning of the period (on date X). However, the fieldwork has only recently been concluded (as shown in the enclosed documents); consequently, we need a s econd extension in order to finish the analysis and prepare our submissions to the Office.’

• ‘Death’ is also considered an ‘exceptional circumstance’. The same applies to serious illness, provided that no reasonable substitution was available.

• Finally, ‘exceptional circumstances’ also include ‘force majeure’ situations. ‘Force majeure’ is defined as a natural and unavoidable catastrophe that interrupts the expected course of events. It includes natural disasters, wars and terrorism, and unavoidable events that are beyond the party’s control.

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Where a request is filed for an extension to an extendible time limit before this time limit expires and is not accepted, the party concerned will be gr anted at least one day to meet the deadline, even if the request for an extension arrives on the last day of the time limit.

4.1.4 Continuation of proceedings

Article 82 CTMR Communication No 06/05 of the President of the Office

The expressions ‘further processing’ and ‘continuation of proceedings’ have the same meaning.

Article 82 CTMR provides for the continuation of proceedings where time limits have been missed but excludes various time limits laid down in certain articles of the CTMR and CTMIR. Communication No 06/05 of the President of the Office of 16/09/2005 on restoration into missed time limits indicates that, with a few exceptions, most of these exclusions are self-explanatory.

The excluded time limits are the following:

• Those laid down in Article 81 CTMR, avoiding double relief for the same time limits;

• Those referred to in Article 112 CTMR, i.e. the three-month period within which conversion must be requested and the conversion fee paid;

• The opposition period and the time limit for paying the opposition fee laid down in Article 41 CTMR;

Those laid down in Article 42 CTMR, i.e. the time limits set by the Office for the parties to submit observations within the opposition procedure. This covers the time limits for the opponent to substantiate its opposition under Rule 19 CTMIR, the time limit laid down in Rule 20(2) CTMIR for the applicant to reply, the time limit under Rule 20(4) CTMIR for the opponent to rebut and the time limits for any further exchange of arguments, if allowed by the Office (decision of 07/12/2011, R 2463/2010-1 – ‘Pierre Robert/Pierre Robert’).

Pursuant to Rule 50(1), 2nd sentence CTMIR, these (or the corresponding) time limits shall not be applicable in second instance proceedings before the Boards of Appeal.

None of the other time limits during the opposition procedure are referred to in Article 42 CTMR and, therefore, they are not excluded from further processing. Consequently, the Office will grant further processing for:

○ the time limit under Article 119(6) CTMR and Rule 16(1) CTMIR to translate the notice of opposition;

○ the time limit under Rule 17(4) CTMIR to remedy deficiencies that affect the admissibility of the opposition;

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○ the time limit under Rule 22(1) CTMIR for the applicant to request that the opponent prove use of its earlier mark;

○ the time limit under Rule 22(2) CTMIR for the opponent to submit proof of use of its earlier mark;

○ the time limit under Rule 22(6) CTMIR to translate proof of use.

• Those laid down in Article 25(3), Article 27, Articles 29(1), 33(1), 36(2) and 47(3), Articles 60 and 62, Article 65(5) and Article 82, and the time limits laid down by the CTMIR for claiming, after the application has been filed, priority within the meaning of Article 30, exhibition priority within the meaning of Article 33 or seniority within the meaning of Article 34.

Article 82 CTMR does not exclude any of the time limits that apply in proceedings for revocation or declaration of invalidity.

The party seeking continuation of proceedings must make the request, for which a fee is charged as established in the CTMFR, within two months of the expiry of the original time limit and complete the omitted act by the time the request for continuation is received.

There can be no extension or continuation of the two-month deadline. There is no substantive requirement to be fulfilled such as when requesting restitutio in integrum.

4.1.5 Restitutio in integrum

A party to proceedings before the Office may be reinstated in its rights (restitutio in integrum) if, in spite of all due care required by the circumstances having been taken, it was unable to meet a time limit vis-à-vis the Office, provided that the failure to meet the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing the loss of any right or means of redress.

For further information see the Guidelines, Part A, General Rules, Section 8, Restitutio in Integrum.

General Principles to Be Respected in Proceedings

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART A

GENERAL RULES

SECTION 2

GENERAL PRINCIPLES TO BE RESPECTED IN PROCEEDINGS

General Principles to Be Respected in Proceedings

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Table of Contents

1 Adequate Reasoning................................................................................. 3

2 The Right to Be Heard............................................................................... 3

3 General Principles of EU Law................................................................... 4

4 Means of Taking Evidence........................................................................ 5 4.1 Written evidence......................................................................................... 6 4.2 Oral evidence.............................................................................................. 6 4.3 Specific means of evidence....................................................................... 6

4.3.1 Commissioning of experts by the Office......................................................... 6 4.3.2 Affidavits ......................................................................................................... 7 4.3.3 Inspections...................................................................................................... 8

4.4 Costs of taking evidence ........................................................................... 8

5 Oral Proceedings....................................................................................... 8 5.1 Opening of oral proceedings..................................................................... 8 5.2 Course of the oral proceedings................................................................. 9 5.3 Minutes of evidence and of oral proceedings ........................................ 10

6 Decisions.................................................................................................. 10 6.1 Contents.................................................................................................... 10 6.2 Apportionment of costs ........................................................................... 10

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Articles 75-78 and 85 CTMR

1 Adequate Reasoning

Office decisions shall be in writing and shall state the reasons on which they are based. The reason for this is twofold: to explain to interested parties why the measure was taken so that they can protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (judgments of 12/07/2012, T-389/11, ‘Guddy’, para. 16 and of 22/05/2012, T-585/10, ‘Penteo’, para. 37, as well as the case-law cited).

However, if the Office does not respond to all the arguments raised by the parties, this does not infringe the duty to state reasons.

It is sufficient that it sets out the facts and the legal considerations of fundamental importance in the context of the decision (see, among others, judgments of 18/01/2013, T-137/12, ‘Vibrator’, paras 41 and 42; of 20/02/2013, T-378/11, ‘Medinet’ ‘, para. 17; of 03/07/2013, T-236/12, ‘Neo’, paras 57 and 58; of 16/05/2012, T-580/10, ‘Kindertraum’, para. 28; or judgment of 10/10/2012, T-569/10, ‘Bimbo Doughnuts’, paras 42-46, confirmed by judgment of 08/05/2014, C-591/12 P).

2 The Right to Be Heard

In accordance with the general principle of the right of defence, a person whose interests are affected by a dec ision taken by a public authority must be given the opportunity to express their point of view. Therefore, in all proceedings before the Office, the parties will always have the opportunity to state their positions and to put forward their grounds of defence.

Decisions will only be based on reasons or evidence on which the parties have had an opportunity to present their comments. The right of defence therefore requires a communication to be received (judgment of 25/10/2012, T-191/11, ‘Miura’, para. 25).

The right to be heard covers all the matters of fact or law, together with the evidence that forms the basis for the decision. However, the right to be heard does not apply to the final position that is going to be adopted. Therefore, the Office is not bound to inform the parties of its legal opinion before issuing a decision and to afford them the opportunity to submit their observations on that position, or even to submit additional evidence (see, among others, judgments of 14/06/2012, T-293/10, ‘Colour per se’, para. 46 in fine; of 08/03/2012, T-298/10, ‘Biodanza’, para. 101; and judgment of 20/03/2013, T-277/12, ‘Caffè Kimbo’, paras 45 and 46).

The Office will examine the facts in proceedings before it on its own initiative, although in proceedings relating to relative grounds for refusal it will restrict this examination to the facts, evidence and arguments provided by the parties (this also applies to cancellation proceedings).

This restriction does not prevent the Office from taking into consideration, in addition to the facts expressly put forward by the parties, facts that are well known, that is, those that are likely to be known by anyone or that may be learnt from generally accessible sources or those arising from practical experience generally acquired from marketing general consumer goods that are likely to be known by anyone and are in particular

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known by the consumers of those goods. Therefore, the Office can use facts that are a matter of common knowledge as a basis for its reasoning.

The Office is not required to prove the accuracy of these well-known facts and, therefore, it is not obliged to give examples of such practical experience; it is up to the party concerned to submit evidence to refute it (see, among others, judgment of 20/03/2013, T-277/12, ‘Caffè Kimbo’, para. 46; judgment of 11/07/2013, T-208/12, ‘Rote Schnürsenkelenden’, para. 24; judgment of 21/02/2013, T-427/11, ‘Bioderma’, paras 19-22; judgment of 08/02/2013, T-33/12, ‘Medigym’, paras 20 and 25; judgment of 07/12/2012, T-42/09, ‘Quadratum’, para. 73; and judgment of 19/09/2012, T-231/11, ‘Stoffmuster’, para. 51).

However, in ex parte proceedings when the Office, on its own initiative, assembles facts that are not well known and that are intended to serve as the basis for its decision, it is under an obligation to notify the party of those facts in order that the party may submit its views thereon.

If documents are filed or allegations are made after a deadline set by the Office has expired, these will in principle be considered to be late and the document will not be taken into account. For more details, see the Guidelines, Part C, Opposition, Section 1, Procedural matters, 4.5.1 Additional evidence for proof of use and the Guidelines, Part C, Opposition, Section 6, Proof of use, 3.3.1 Time limit for providing proof of use.

However, the Office will take legal issues into account, irrespective of whether or not they have been pleaded by the parties.

Changing circumstances arising in the course of the proceedings will also be taken into account. For example, if during opposition proceedings the earlier right on which the opposition was based lapses (e.g. it is not renewed or is declared invalid), this will always be taken into account.

3 General Principles of EU Law

The Office must respect the general principles of EU law, such as equal treatment and sound administration (see, among others, judgment of 24/01/2012, T-260/08, ‘Visual Map’; judgment of 23/01/2014, T-68/13, ‘Care to care’, para. 51; and judgment of 10/03/2011, C-51/10 P, ‘1000’, para. 73).

For reasons of legal certainty and of sound administration, there must be a stringent and full examination of all trade mark applications in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case.

The lawfulness of the Office’s decisions must be assessed solely on the basis of Community regulations, as interpreted by the European Union judicature. Accordingly, OHIM is not bound either by its previous decision-making practice or by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. This is the case even if such a decision was adopted in a country belonging to the linguistic area in which the word sign in question originated (judgment of 16/05/2013, T-356/11, ‘Equipment’, para. 7).

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However, in the light of the principles of equal treatment and sound administration, OHIM will take into account the decisions already taken in respect of similar applications and must carefully consider whether it should decide in the same way or not (judgment of 10/03/2011, C-51/10, ‘1000’, paras 74-75; judgment of 27/02/2014, T-225/12, ‘LIDL express’, para 56; judgment of 23/01/2014, T-68/13, ‘Care to care’, para. 51; and judgment of 12/12/2013, T-156/12, ‘Oval’, para. 28). Moreover, the principle of equal treatment and sound administration must be applied in a manner that is consistent with the principle of legality, according to which a person may not rely, in support of its claim, on an unlawful act committed in another procedure (judgment of 23/01/2014, T-68/13, ‘Care to care’, para. 51; judgment of 12/12/2013, T-156/12, ‘Oval’, para. 29; judgment of 02/05/2012, T-435/11, ‘UniversalPHOLED’, para. 38; and judgment of 10/03/2011, C-51/10, ‘1000’, paras 76-77).

4 Means of Taking Evidence

Articles 77 and 78 CTMR Rules 56-60 CTMIR Decision No EX-99-1 as amended by Decision No EX-03-2 of 20/1/2003

In any proceedings before the Office, evidence may be t aken. The means for taking evidence are listed in Article 78 CTMR and Rule 57 CTMIR, although that list is not exhaustive.

The means of evidence are as follows:

• hearing the parties • requests for information • the production of documents and items of evidence • hearing witnesses • opinions by experts • sworn or affirmed statements in writing or statements having a s imilar effect

under the law of the State in which they are drawn up • inspection.

Some of these means, such as requests for information, statements in writing and, in particular, the submission of documents and items of evidence, will be used more frequently than others. Hearing the parties, witnesses or experts, and inspections are used only exceptionally.

The Office will decide which of these means to use but will use them only when necessary for examining the file.

If the Office refuses a request to take evidence, an appeal can only be made together with the appeal against the final decision.

The procedure followed by the Office varies depending on the means of taking evidence proposed.

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4.1 Written evidence

When taking evidence, the Office will confine itself to written evidence in most cases. This is the least costly, simplest and most flexible means of taking evidence.

The Office will therefore give preference to the submission of documents and items of evidence. However, other possible written means of taking evidence include not only a request for information or statements in writing that have been sworn or affirmed or have a similar effect thereto under the law of the State in which they are drawn up, but also opinions by experts, which may consist solely of a written report.

The Regulation makes no provision for any special procedure or formality. Therefore, the Office’s general rules of procedure apply.

Any information, documents or items of evidence submitted by one party will be communicated to the other parties as soon as possible, and the Office may set the other parties a time limit of, in principle, two months to reply.

The Office will base its decision only on r easons on w hich both sides have had an opportunity to submit observations.

For further information on Oral Proceedings, see paragraph 5 below.

4.2 Oral evidence

This refers to evidence taken in oral proceedings, such as hearing the oral evidence of parties, witnesses or experts.

Only in exceptional cases will the Office decide to hear oral evidence, in particular because of the cumbersome nature of the procedure, which is liable to protract the proceedings, and because of the cost, which will have to be borne by the unsuccessful party in inter partes proceedings, or in some cases by both parties.

If the Office invites one of the parties to give evidence orally, it will advise the other parties accordingly so that they can attend.

Similarly, when the Office summons an expert or a witness to a hearing, it will advise the parties concerned. These may be present and put questions to the person giving evidence.

4.3 Specific means of evidence

4.3.1 Commissioning of experts by the Office

Opinions by experts will be used only as a last resort because they involve substantial costs and protract the proceedings.

It is up to the Office to decide whether or not to commission an expert’s opinion and who to appoint as expert. However, the Office does not maintain a list of experts because it uses experts as a means of taking evidence only by way of exception.

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The terms of reference of the expert include:

• a precise description of their task • the deadline for submitting their report • the names of the parties to the proceedings • details of any costs to be reimbursed by the Office.

On receipt of the expert’s report, the Office will forward copies to the parties.

If the Office considers the report sufficient, and if the parties accept this form of report, it will in principle be used only in its written form.

The submission of an oral report or the hearing of oral evidence given by the expert will therefore be at the Office’s discretion.

The parties can object to an expert on the grounds of incompetence or a conflict of interest, or because the expert was previously involved in the dispute or is suspected of partiality. No refusal may be bas ed on the appointed expert’s nationality. If a party objects to the expert, the Office will rule on t he objection. The grounds that may be cited for objecting to an expert are the same as those for objecting to an examiner or Board of Appeal member pursuant to Article 137 CTMR.

4.3.2 Affidavits

Sworn or affirmed statements in writing or statements having a similar effect under the law of the State in which the statement is drawn up are equally admissible as evidence, if provided by a party.

In order for a statement to be considered sworn or affirmed, it must be understood by the parties that making a false statement would be considered a criminal offence under the law of the Member State in which the document was drawn up. Where that is not the case, the document will be considered simply as any other written document or statement (judgment of 28/03/2012, T-214/08, ‘Outburst’, para. 32 and the case-law cited therein).

The evidential value of an affidavit is relative (judgment of 28/03/2012, T-214/08, ‘OUTBURST’, para. 33). In assessing the evidential value of such a document, the Office will consider first and foremost the credibility of the account it contains. It will then take account, in particular, of the person who produced the document, the circumstances in which it came about, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (judgment of 07/06/2005, T-303/03, ‘Salvita’ para. 42 and t he case-law cited therein). Affidavits containing detailed and concrete information and/or that are supported by other evidence have a hi gher probative value than very general and abstractly drafted statements.

The mere fact that affidavits from third parties are made according to a predetermined draft provided by the interested party (parties) does not in itself affect their reliability and credibility, and does not call into question their probative value since the veracity of their contents is certified by the signatory (judgment of 16/09/2013, T-200/10, ‘Avery Dennison’, para. 73).

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4.3.3 Inspections

Only in very exceptional circumstances will the Office carry out an inspection in situ. If it does decide to carry out an inspection, it will, as with any other Office decision, state the means by which it intends to obtain evidence (in the present case, an inspection), the facts it wishes to prove, the date, and the time and place of the inspection.

The date fixed for the inspection must allow the party concerned sufficient time to prepare for it. If the inspection cannot take place for any reason, the proceedings will continue based on the evidence on file.

4.4 Costs of taking evidence

The Office may make the taking of evidence conditional upon a depos it by the party requesting it. The amount will be fixed by the Office based on an estimate of the costs.

The witnesses and ex perts summoned or heard by the Office will be entitled to reimbursement of expenses for travel and subsistence, including an advance. They will also be entitled to compensation for loss of earnings and payment for their work.

The amounts reimbursed and the advances for expenses are determined by the President of the Office and are published in the Office’s Official Journal. For details, see Decision No EX-99-1 as amended by Decision No EX-03-2 of 20/1/2003.

Where the Office decides to adopt means of taking evidence that require oral evidence from witnesses or experts, the Office will bear the cost of this. However, where one of the parties has requested oral evidence, then that party will bear the cost, subject to a decision on the apportionment of costs in inter partes proceedings.

5 Oral Proceedings

Articles 77 and 78 CTMR Rules 56-60

Article 77 CTMR provides that the Office may hold oral proceedings.

Any unofficial contacts such as telephone conversations will not be considered to constitute oral proceedings within the meaning of Article 77 CTMR.

The Office will hold oral proceedings either on its own initiative or at the request of any party to the proceedings only when it considers these to be absolutely necessary. This will be at the Office’s discretion (judgment of 20/02/2013, T-378/11, ‘Medinet’, para. 72 and the case-law cited therein). In the vast majority of cases it will be sufficient for the parties to present their observations in writing.

5.1 Opening of oral proceedings

Where the Office has decided to hold oral proceedings and to summon the parties, the period of notice may not be less than one month unless the parties agree to a shorter period.

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Since the purpose of any oral proceedings is to clarify all outstanding points before the final decision is taken, the Office, in its summons, should draw the parties’ attention to the points that need to be discussed in order for the decision to be taken.

Where the Office considers it necessary to hear oral evidence from the parties, witnesses or experts, it will take a decision stating the means by which it intends to obtain evidence, the relevant facts to be proven and the date, time and place of the hearing. The period of notice will be at least one month, unless the parties concerned agree to a shorter period. The summons will provide a summary of this decision and state the names of the parties to the proceedings and details of the costs, if any, that the witnesses or experts may be entitled to have reimbursed by the Office.

If required, and in order to facilitate the hearing, the Office may invite the parties to submit written observations or to submit evidence prior to the oral hearing. The period fixed by the Office for receiving these observations must allow sufficient time for them to reach the Office and then be forwarded to the other parties.

The parties may likewise submit evidence in support of their arguments on their own initiative. However, if this evidence ought to have been produced at an earlier stage of the proceedings, the Office will decide whether these items of evidence are admissible, taking account of the principle of hearing both parties, where appropriate.

5.2 Course of the oral proceedings

Oral proceedings before the examiners, the Opposition Division and the department entrusted with maintaining the Register will not be public.

Oral proceedings, including the delivery of the decision, will be public before the Cancellation Division and the Boards of Appeal, in so far as the department before which the proceedings are taking place does not decide otherwise in cases where admission of the public could have serious and unjustified disadvantages, in particular for a party to the proceedings.

If a party who has been duly summoned to oral proceedings does not appear before the Office, the proceedings may continue without them.

If the Office invites a party to give evidence orally, it will advise the other parties accordingly so that they can attend.

Similarly, when the Office summons an expert or a witness to a hearing, it will advise the parties concerned. These may be present and put questions to the person giving evidence.

At the end of the oral proceedings the Office should allow the parties to present their final pleadings.

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5.3 Minutes of evidence and of oral proceedings

Rule 60 CTMIR

Minutes of the taking of evidence and o f oral proceedings will be c onfined to the essential elements. In particular, they will not contain the verbatim statements made, nor will they be s ubmitted for approval. However, any statements by experts or witnesses will be recorded so that at further instances the exact statements made can be verified. The parties will receive a copy of the minutes (but not of the recorded statements).

6 Decisions

6.1 Contents

Article 75 CTMR Rule 55 CTMIR

Office decisions shall be reasoned to such an extent that their legality can be assessed at the appeal stage or before the General Court or Court of Justice.

The decision will cover the relevant points raised by the parties. In particular, if there are different outcomes for some goods and services of the CTM application or registration concerned, the decision will make clear which of the goods and services are refused and which are not.

The name or names of the person(s) who took the decision will appear at the end of the decision (Rule 55 CTMIR)

At the end of the decision, there will also be a notice advising of the right to appeal.

Failure to include this notice does not affect the legality of the decision and does not affect the deadline for filing an appeal.

6.2 Apportionment of costs

Article 82(5) and Article 85 CTMR Rules 51 and 94 CTMIR

In ex parte proceedings, there is no decision on costs, nor any apportionment of costs. The Office will not reimburse any fees paid (the exceptions are Rule 51 CTMIR, refund of the appeal fee in certain cases, and Article 82(5) CTMR, refund of the fee for further processing if further processing is not granted).

Decisions on costs, or the fixing of costs, are limited to opposition and cancellation proceedings (including the ensuing appeal proceedings or proceedings before the GC and CJEU). ‘Costs’ comprise the costs incurred by the parties to the proceedings, chiefly (i) representation costs (although the thresholds are relatively low) and costs for taking part in oral hearings; ‘representation costs’ means the costs for professional

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representatives within the meaning of Article 93 CTMR, not for employees (even from another company with economic links); (ii) the opposition or cancellation fee paid by the opponent or third party.

‘Apportionment of costs’ means that the Office will decide whether and to what extent the parties have to reimburse each other. It does not involve the relationship with the Office (fees paid, the Office’s internal costs).

Therefore, if a decision is given in inter partes proceedings, the Office will decide on the apportionment of costs. The losing party will bear the fees and costs incurred by the other party that are essential to the proceedings. If both parties fail on one or more heads or if reasons of equity so dictate, the Office may determine a di fferent apportionment of costs.

The decision will fix the costs to be paid by the losing party/parties. No proof that these costs were actually incurred is needed for this purpose. This part of the decision is a title that can be executed in simplified proceedings, in all Member States of the EU.

If the contested CTM application or CTM is withdrawn or surrendered, or the opposition or request for cancellation is withdrawn, the Office will not decide on the substance of the case, although it will normally take a decision on costs. The party terminating the proceedings will bear the fees and costs incurred by the other party. Where the case is closed for other reasons, the Office will fix the costs at its discretion. In no case will the decision on costs be based on hypothetical assumptions about who might have won the proceedings if a decision on substance had been taken. Furthermore, within one month of the date of notification fixing the amount of the costs, the party concerned may request a review. This request must state the reasons on which it is based and must be accompanied by the corresponding fee (Article 2(30) CTMFR).

Language of Proceedings

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART A

GENERAL RULES

SECTION 4

LANGUAGE OF PROCEEDINGS

Language of Proceedings

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Table of Contents

1 Introduction ................................................................................................3 2 From filing to registration (excluding opposition) ...................................3

2.1 Application ...................................................................................................... 3 2.2 Other requests ................................................................................................ 4

3 After registration (excluding cancellation) ...............................................4 4 Opposition and cancellation......................................................................4 5 Invariable nature of the language rules ....................................................5 6 Translations and their certification ...........................................................5 7 Non-compliance with the language regime ..............................................5

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1 Introduction

Article 119 CTMR Rules 95, 96, 98 CTMIR Communication No 4/04 of the President of the Office

There are five Office languages: English, French, German, Italian and Spanish. However, an application for a Community trade mark may be filed in any of the official EU languages. The CTMR lays down rules for determining and using the language of the proceedings. These rules may vary from one set of proceedings to another, in particular depending on whether the proceedings are ex parte or inter partes.

This section deals only with the horizontal provisions common to all types of proceedings. The exceptions for particular types of proceedings are dealt with in the corresponding sections of the Guidelines.

2 From filing to registration (excluding opposition)

2.1 Application

A Community trade mark application (CTM application) may be filed in any of the official EU languages.

A second language must be indicated from among the five languages of the Office.

During the proceedings, the applicant may use

• the first language if it is an Office language;

• or the second language, at its discretion, if the first language is not an Office language.

The Office uses

• only the first language if it is an Office language;

• the first language if it is not an Office language, following the CJEU ‘Kik’ judgment (judgment of 09/09/2003, C-361/01 P), unless the applicant has declared in writing its consent for the Office to use the second language, in which case the Office proceeds accordingly. Consent to use of the second language must be given for each individual file; it may not be given for all existing or future files.

This language regime applies throughout the application and ex amination procedure until registration, except for oppositions and ancillary requests (see following paragraph).

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2.2 Other requests

Rule 95(a) CTMIR

During the period from filing to registration, any request, application or declaration that is not concerned with the examination of the application as such but that starts an ancillary procedure (inspection of files, registration of a transfer or licence, request for conversion, declaration of division) may be submitted in the first or second language, at the discretion of the CTM applicant or third party. That language then becomes the language of the proceedings for those ancillary proceedings. This applies irrespective of whether or not the first language is an Office language.

3 After registration (excluding cancellation)

Rule 95(b) CTMIR

Any request, application or declaration of division or surrender, with the exception of a cancellation request, made after the CTM has been registered must be submitted in one of the five Office languages.

Example: After a CTM has been registered, the CTM proprietor may file a request for the registration of a licence in English and, a few weeks later, file a request for renewal in Italian.

4 Opposition and cancellation

Rules 16 and 38(1) CTMIR

An opposition or request for cancellation (application for revocation or declaration of invalidity) may be filed

• at the discretion of the opponent/applicant for cancellation in the first or second language of the CTM application if the first language is one of the five languages of the Office;

• in the second language if the first language is not an Office language.

This language becomes the language of the proceedings for the opposition or cancellation proceedings, unless the parties agree to a different one (from among the official EU languages).

An opposition or request for cancellation may also be filed in any of the other Office languages, provided that within one month of the expiry of the opposition period or within one month of the filing of the application for cancellation, the opponent/applicant for cancellation files a t ranslation into a l anguage that is available as a l anguage of proceedings.

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5 Invariable nature of the language rules

The Regulations allow certain choices to be made from among the available languages in the course of the proceedings (see above) and, during specified periods, a different language to be chosen as the language of the proceedings for opposition and cancellation. However, with those exceptions, the language rules are invariable. In particular, the first and second languages may not be amended in the course of the proceedings.

6 Translations and their certification

Rule 98 CTMIR

The general rule is that where a translation of a document is required, it must reach the Office within the time limit set for filing the original document. This applies unless an exception to this rule is expressly provided in the Regulations.

The translation must identify the document to which it refers and r eproduce the structure and contents of the original document. The Office may require that a certified translation be filed within a specific period, but does so only if it has reason to doubt the veracity of the translation.

7 Non-compliance with the language regime

In case the language regime is not complied with the Office will issue a deficiency letter. S hould the deficiency not be r emedied the application or the request will be refused.

For more information on language regimes for particular types of proceedings the corresponding sections of the Guidelines should be consulted.

Revocation of Decisions, Cancellation of Entries in the Register and Correction of Errors

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART A

GENERAL RULES

SECTION 6

REVOCATION OF DECISIONS, CANCELLATION OF ENTRIES IN THE

REGISTER AND CORRECTION OF ERRORS

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Table of Contents

1 Revocation of Decisions and Cancellation of Entries in the Register .. 3 1.1 Obvious procedural error attributable to the Office.................................3 1.2 Who decides on requests for revocation/cancellation? ..........................4 1.3 Procedural aspects ....................................................................................4

1.3.1 Assessment .................................................................................................... 5 1.3.2 Distinction between one and two parties........................................................ 5

1.3.2.1 Procedures for one party.............................................................................6 1.3.2.2 Procedure for more than one party..............................................................6

2 Correction of Errors in Decisions and other Notifications .................... 7 2.1 Correction of errors in decisions ..............................................................7

2.1.1 General remarks............................................................................................. 7 2.1.2 Procedural aspects......................................................................................... 8

2.1.2.1 Time limit .....................................................................................................8 2.1.2.2 Assessment.................................................................................................8 2.1.2.3 Procedure....................................................................................................8

2.2 Correction of errors in notifications other than decisions ......................9

3 Correction of Errors in Publications and Correction of Errors in the Register or in the Publication of the Registration .................................. 9

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1 Revocation of Decisions and Cancellation of Entries in the Register

Article 80 CTMR

Under certain conditions a decision taken by the Office can be revoked or an entry in the Register cancelled. This part of the Guidelines deals with the practical aspects of revocation/cancellation under Article 80 CTMR; it does not apply to Registered Community designs (RCDs).

The revocation procedure can be initiated either by a party to the proceedings or by the Office on its own motion.

A decision can only be revoked by another decision. The same applies to cancellations of entries in the register.

1.1 Obvious procedural error attributable to the Office

A decision may be revoked or an entry in the Register cancelled only when it contains an obvious procedural error attributable to the Office.

A decision/entry contains an obvious procedural error where there was an error in the proceedings (usually when an essential procedural step was omitted) or where the decision/entry ignores a procedural action taken by the parties. Procedural errors have to be distinguished from errors in substance, where no r evocation is possible. The decision/entry is wrong from a procedural point of view (i.e. suffers from an obvious procedural error) if the procedure established by the Regulations was not followed properly.

The following is a non-exhaustive list of examples of obvious procedural errors demanding revocation.

• The CTM is registered despite having previously been withdrawn.

• The opposition has been found admissible even though some admissibility requirements were not met (see CJEU judgment of 18/10/2012, C-402/11 P, ‘REDTUBE’).

• The CTM is registered despite a deficiency in the payment of the application fees.

• The CTM is registered despite a successful opposition.

• The CTM’s refusal on absolute grounds is notified before expiry of the time limit given to the applicant to send observations in reply to the objection, or ignoring the observations the applicant filed on time. (Where the applicant has responded within the time limit, the examiner can continue dealing with the application, for example by issuing a decision, and is not required to wait until expiry of the time limit set in the objection letter.)

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• The CTM is refused on absolute grounds, ignoring a valid request from the applicant for the opportunity to submit evidence of acquired distinctiveness (Article 7(3) CTMR).

• The CTM is refused on absolute grounds, ignoring the evidence of acquired distinctiveness duly submitted.

• The CTM is refused by the Opposition Division, ignoring an unprocessed request for proof of use or without dealing with the issue of proof of use.

• The CTM is registered despite a pending opposition.

• The opposition is rejected on the basis of lack of proof of use but

○ the opponent was not expressly given a t ime limit for submitting proof of use;

○ proof of use was filed on time and was overlooked.

• The opposition decision was rendered while the proceedings were suspended or interrupted or, more generally, while a time limit for one of the parties was still running.

• Any breach of the right to be heard (observations not forwarded to the other party when that party should have been given a time limit to reply pursuant to the Regulation or the Office’s practice).

• When closing a file due to a limitation of the contested CTMA or a withdrawal, the Office has issued a decision on costs, overlooking an agreement between both parties on costs that was on file at the time.

• A transfer of ownership was entered in the Register despite insufficient evidence of the transfer.

Whether or not these procedural errors were a result of human error or of the incorrect functioning of an IT tool is immaterial.

The effect of the revocation of a decision or of the cancellation of an entry in the Register is that the decision or entry is deemed to never have existed. The file is returned to the procedural stage it was at before the erroneous decision or entry was made.

1.2 Who decides on requests for revocation/cancellation?

Decisions on revocation/cancellation are made by the department or unit who made the entry or took the decision and can be appealed under Article 58(2) CTMR.

1.3 Procedural aspects

Article 80 CTMR

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1.3.1 Assessment

Examiners must verify, firstly, whether the decision or entry contains an obv ious procedural error, secondly, whether more than six months have passed since notification of the decision or entry in the Register and, thirdly, whether there has been an appeal against the decision/entry in the Register.

(a) Assessment: It must be verified whether the decision or entry contains an obvious procedural error. For further information see above under paragraph 1.1.

(b) Six months: Whenever an obvious procedural error comes to the attention of an examiner, it must be established whether more than six months have passed since notification of the decision or entry in the Register. Revocation/cancellation is not possible if more than six months have passed (Article 80(2) CTMR).

Article 80 CTMR mentions that cancellation or revocation ‘shall be det ermined’ within six months of the date of the entry or decision. This means that even if the time limit has lapsed, an entry will be cancelled or a decision revoked if the Office is made aware in writing of an obvious procedural error in that entry or decision within six months of notification of that entry/decision. It also means that an entry can be cancelled or a decision revoked after the six-month period if the Office sends a notification initiating the cancellation/revocation proceedings within six months of notification of that entry/decision.

(c) Decision/entry against which appeal pending: Before issuing a letter notifying parties of its intention to cancel an entry or revoke a decision, and before actual cancellation/revocation, the Office must verify whether the decision or entry in the Register has been appealed against. A decision or entry cannot be revoked/cancelled if an appeal against it is pending before the Boards (decision of 28/04/2009, R 323/2008-G – ‘BEHAVIOURAL INDEXING’).

1.3.2 Distinction between one and two parties

The procedure where only one party is affected is described below in paragraph 1.3.2.1. Examples are when the Office duly receives third-party observations that raise doubts but the CTMA is not blocked and continues to registration, and where a CTMA is registered although the application fee has not been paid.

Errors that concern incorrect handling of the files after a decision has been taken, for example where a CTMA is registered despite having been refused on absolute grounds, affect only one party – the applicant.

If revocation of a decision is likely to affect more than one party, the procedure described below in paragraph 1.3.2.2 must be followed. For example, more than one party is affected by the revocation of a decision in opposition proceedings where the Office overlooked a request for proof of use.

Errors that concern incorrect handling of the files after an opposition decision has been taken, such as where the entire CTMA is rejected but is still registered, are considered to affect both the applicant and the opponent.

Errors in registering a transfer of ownership also affect more than one party. While the procedure is essentially ex parte, the Office may, depending on the case, consider that

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more than one party is affected: the new owner, the old owner and the third party that should have been entered in the Register.

1.3.2.1 Procedures for one party

Error found by Office

If the Office itself finds out that an error has been made, it informs the applicant/owner of its intention to revoke the decision/cancel the entry and sets a time limit for observations of one month if the applicant/owner has its head office in the EU or two months if it does not. The letter must state the reasons for the revocation/cancellation.

If the applicant/owner agrees or does not submit any observations, the Office revokes the decision/cancels the entry.

If the applicant/owner does not agree to revocation or cancellation, a formal decision has to be taken, which is subject to the usual requirements as described in the Guidelines, Part A, General Rules, Section 2, General Principles to be respected in Proceedings, paragraph 7, Decisions.

Error notified by affected party

If the applicant/owner informs the Office in writing of an error that will be understood as a request for revocation/cancellation, there is no need to ask for observations. In such cases, it must be determined whether the request for revocation/cancellation is eligible. If so, the decision or entry in the Register is revoked/cancelled. If the Office finds that there are no reasons to revoke/cancel, it rejects the party’s request by a dec ision, giving the reasons why the request is rejected.

1.3.2.2 Procedure for more than one party

Error found by Office

If the Office itself finds out that an error has been made, it informs both parties of its intention to revoke the decision/cancel the entry and sets a time limit for observations of, in principle, two months (reduced to one month if both parties have their respective head offices in the EU).

If the parties agree or do no t submit any observations in reply, the Office must revoke/cancel the decision/entry in the Register.

If one of the parties does not agree to the revocation/cancellation, a reasoned decision has to be taken, which is subject to the usual requirements as described in the Guidelines, Part A, General Rules, Section 2, General Principles to be respected in Proceedings, paragraph 7, Decisions.

Error notified by one of the parties

If the party adversely affected by the error informs the Office in writing of an error that will be under stood as a request for revocation/cancellation, it must be determined

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whether the request for revocation/cancellation is eligible. If so, the Office notifies the party that benefited from the error (the other party) of its intention to revoke/cancel (and sends a copy of this notification to the first party for information). A time limit for observations of, in principle, two months is set (which may be reduced to one month if the adversely affected party has its head office in the EU).

If the other party agrees or does not submit any observations in reply, the Office must revoke the decision/cancel the entry.

If the other party does not agree to revocation or cancellation, a reasoned decision has to be taken, which is subject to the usual requirements as described in the Guidelines, Part A, General Rules, Section 2, General Principles to be respected in Proceedings, paragraph 7, Decisions.

For example, where an opponent that has seen its opposition upheld and the CTMA rejected informs the Office that the CTMA has nevertheless been registered, the applicant must be informed and given two months to submit observations. The entry will be cancelled regardless of whether the applicant agrees or does not reply.

If the party that benefited from the error informs the Office in writing, it must be determined whether the request for revocation/cancellation is eligible. If so, the party adversely affected by the error must be informed accordingly. As revocation/cancellation will be to the latter’s advantage, the decision can be revoked or entry cancelled at the same time as the letter is sent (to both parties). There is no need for the party that benefited from the error to submit observations, as its letter informing the Office of the error can be taken as its agreement to revocation/cancellation.

For example, where an applicant informs the Office that its CTMA has been registered despite being rejected by decision of the Office, the entry in the Register must be cancelled. There is no need to hear the opponent.

Finally, once a revocation or cancellation has become final, it must be published if a wrong entry in the Register has already been published. If the Office finds that there are no reasons to revoke a decision/cancel an entry, it will reject the relevant request by letter and send copies of both this letter and the original request to the other party for information.

2 Correction of Errors in Decisions and other Notifications

Rule 53 CTMIR

2.1 Correction of errors in decisions

2.1.1 General remarks

According to Rule 53 CTMIR, where the Office becomes aware, of its own motion or at the instance of a party to the proceedings, of a linguistic error, error of transcription or obvious mistake in a decision, it has to ensure that the error or mistake is corrected by the department or division responsible. It is apparent from the wording that the only legitimate purpose of corrections made on the basis of this provision is to correct spelling or grammatical errors, errors of transcription – such as errors relating to the names of the parties or the written forms of the signs – or errors that are so obvious

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that nothing other than the wording as corrected could have been under stood. However, when the error affects the dictum of a decision, only revocation is possible, and then only if all the conditions are met.

The Office defines ‘obvious error’ as in No B.16 in the Joint Statements by the Council and the Commission entered in the minutes of the Council meeting at which the CTMR was adopted in relation to Article 44(2) CTMR and to Rule 53 CTMIR: ‘… the words “obvious mistake” should be understood as meaning mistakes which obviously require correction, in the sense that nothing else would have been i ntended than what is offered as the correction.’

The distinction between revocation under Article 80 CTMR and c orrection under Rule 53 CTMIR is that revocation annuls a decision, whereas the correction of errors does not affect the validity of the decision and does not open a new appeal period.

An example of an error of transcription would be when a trade mark is referred to incorrectly, for example, ‘HAMMER’ is referred to as ‘HUMMER’.

An example of an obvious error is when the earlier mark and the contested mark are interchanged in the comparison of the signs.

2.1.2 Procedural aspects

2.1.2.1 Time limit

The Regulations do not set a time limit for the correction of errors in decisions. This suggests that corrections can be made any time, as long as they do not clash with the principle of equity.

2.1.2.2 Assessment

Examiners must verify, firstly, whether the error to be corrected is a linguistic error, an error of transcription or an obvious error and, secondly, whether there has been a n appeal against the decision.

(a) Assessment: Before sending a correction letter, the examiner must verify whether the error to be corrected is a linguistic error, an error of transcription or an obvious error.

(b) Appeal: The examiner must also verify whether there has been an appeal against the decision. No correction can be made if an appea l against the decision is pending before the Boards. However, the Boards must be informed of the situation.

2.1.2.3 Procedure

Linguistic errors, errors of transcription and obvious errors are corrected by sending a corrigendum to the affected party/parties. The accompanying letter must briefly explain the corrections.

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Once the correction has been made, the examiner makes sure that the changes are reflected in the decision as it appears in the Office’s database.

The date of the decision or entry remains unchanged after correction. Therefore, the time limit for appeal is not affected.

When the fixation of costs is part of the dictum of the decision it can be corrected only by revocation.

2.2 Correction of errors in notifications other than decisions

Errors in notifications other than decisions can be remedied by sending a c orrected notification indicating that the latter replaces and annuls the one previously sent. The notification should include an apology for any inconvenience caused.

3 Correction of Errors in Publications and Correction of Errors in the Register or in the Publication of the Registration

Article 39 CTMR Rules 14, 27, 84, 85 CTMIR

Article 39 CTMR states that CTMAs that have not been refused on absolute grounds should be published one month after the search report has been issued.

Rule 14 CTMIR refers to the correction of mistakes and errors in the publication of the application pursuant to Article 39 CTMR.

Rule 27 CTMIR refers to mistakes and errors in the registration of a CTM or in any entry made in the Register in accordance with Rule 84 CTMIR, including any Decision of the President pursuant to Rule 84(4) CTMIR, and to errors in the publication of the those entries in the Register.

The main difference between the correction of an entry in the Register pursuant to Rule 27 and the cancellation of an entry in the Register pursuant to Article 80 CTMR is that the former relates to only one part of the publication, whereas the latter cancels the whole entry in the Register.

Where there is an error attributable to the Office, the latter corrects it either of its own motion (where the Office itself has become aware of the error) or at the proprietor’s request.

Corrections of errors in CTM applications that do not require republication of the application for opposition purposes are published in Section B.2 of the Bulletin. Corrections pursuant to Rule 14 CTMIR that do require republication of the application for opposition purposes are published in Section A.2. However, republication will only be required if the initial publication published a more limited list of goods and services.

In all cases, the affected party/parties are notified of the corrections pursuant to Rule 14 or 27.

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The following are examples of errors that can be corrected (Rule 27(1) CTMIR).

• The CTM has been published for one class fewer than applied for.

• The sign ‘x’ was applied for and the publication refers to the sign ‘y’, or the list of goods and services published is wrong.

• The CTM has been registered without taking into consideration a limitation.

Corrections of errors in registered CTMs that do not require republication for opposition purposes are published in subsection B.4.2 of the Bulletin. Corrections pursuant to Rule 27 CTMIR that require republication of part of the application for opposition purposes are published in subsection A.2.1.2.

Republication for opposition purposes will always be required where a correction involves changes to the representation of the mark or a broadening of the list of goods and services already published. For other corrections, republication must be decided on a case-to-case basis.

Corrections to entries in the Register must be published pursuant to Rules 27(3) and 85(2) CTMIR. Corrections of relative errors in an entry in the Register are published in subsection B.4.2 of the Bulletin. All the examples listed above (of corrections and of revocation/cancellations) require publication.

No correction need be published pursuant to Rule 27 CTMIR when the initial publication was in the wrong section of the Bulletin. According to Communication No 11/98 of the President of the Office of 15/12/1998, ‘the legal effect of the publication under Article 9(3) of the Community Trade Mark Regulation remains the same regardless of whether the publication is made in Part B. 1 or Part B. 2 of the Bulletin’.

Time limit: There is no time limit for corrections pursuant to Rule 14 or Rule 27 CTMIR. They can be made at any time once the error has been detected.

Revision

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART A

GENERAL RULES

SECTION 7

REVISION

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Table of Contents

1 General Principles ..................................................................................... 3 1.1 Introduction ................................................................................................3 1.2 In ex parte cases ........................................................................................3 1.3 In inter partes cases...................................................................................3

2 Procedure where Revision is Available ................................................... 4 2.1 Verification of whether the appeal is deemed to have been filed ...........4 2.2 Verification whether the appeal is admissible..........................................4 2.3 Verification whether the appeal is well founded ......................................5

2.3.1 Situations where the initial decision may be rectified ..................................... 5 2.3.2 Situations where, although the appeal is well founded, revision may not be

granted............................................................................................................ 5

2.4 Impact of a request for restitutio in integrum...........................................5 2.5 Decision to grant revision..........................................................................6

2.5.1 Deadline for taking the decision ..................................................................... 6 2.5.2 Contents of the decision ................................................................................. 6

2.6 Appeal against the decision ......................................................................6 2.7 Communication of the decision ................................................................7

3 Procedure where Revision is not Granted .............................................. 7

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1 General Principles

Articles 61, 62 CTMR

1.1 Introduction

It is the responsibility of the Boards of Appeal to decide on an appealed decision. Pursuant to Articles 61 and 62 CTMR, the Board sends the appealed decision back to the department that took the decision in order for it to be revised. This enables the first- instance decision-taker to rectify the decision if the appeal is admissible and well founded. Inter partes cases may only be rectified if authorised by the other party (see decision of 11/08/2009, R 1199/2008-4 – ‘DIPLOMÃTICO/DIPLOMAT’)

The purpose of revision is to avoid the Boards of Appeal being inundated with appeals against decisions for which a need for rectification has been recognised by the Office. However, the aim is not to remove mistakes in decisions made by the Office without changing the outcome of a case, but to grant the appellant the relief sought.

1.2 In ex parte cases

Revision can be granted where an appeal has been lodged against a decision for which the Boards of Appeal are competent pursuant to Article 58 CTMR.

If the division or instance of the Office whose decision is appealed considers the appeal to be admissible and well founded, it must rectify its decision.

If the decision is not rectified within one month after receipt of the statement of grounds of appeal, the appeal must be remitted to the Boards of Appeal without delay and without comment as to its merits.

1.3 In inter partes cases

Revision is also available in inter partes proceedings. These comprise opposition proceedings (including where the opposition is rejected as inadmissible), proceedings concerning applications for revocation or declaration of invalidity, and certain proceedings concerning inspection of files.

Revision is not available where the one-month time limit following receipt by the Office of the statement of grounds of appeal has expired.

Revision requires a pending appeal. It is not available where an appeal has been withdrawn before the one-month time limit for revision has expired and a decision on revision has not yet been taken.

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2 Procedure where Revision is Available

Articles 61, 130 CTMR

Where revision is available, the Registrar of the Board of Appeal sends the appeal documents and any subsequent communications relating to the appeal to the Office division that took the decision.

The division concerned examines whether revision may be granted.

Revision may only be granted where the appeal is admissible and well founded.

2.1 Verification whether the appeal is deemed to have been filed

Article 60 CTMR Rule 49(3) CTMIR Article 2(18), Article 8(3), (4) CTMFR

As an appeal is deemed to have been filed only when the appeal fee has been paid, the appealed decision for which the appeal fee has not been paid may not be revised.

The competent division must, therefore, verify whether the appeal fee has been fully paid within two months of notification of the contested decision.

Otherwise, the appealed decision cannot be r evised and has to be r emitted without delay (not necessarily only at the end of the one-month time limit) to the Registrar at the Boards of Appeal.

For more details on fees, see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.

2.2 Verification whether the appeal is admissible

Articles 58-60 CTMR Rule 48, Rule 49(1), (2) CTMIR

The competent division must be satisfied that the appeal is admissible, that is that it complies with the requirements laid down in Articles 58 to 60 CTMR and Rule 48(1)(c) and Rule 48(2) CTMIR, as well as with all other requirements to which Rule 49(2) CTMIR refers.

The competent division may not under any circumstances contact the appellant to remedy formal or substantive deficiencies of the appeal. This prohibition includes oral contact. Where the requirements for admissibility of the appeal are not met, the case must be remitted without delay to the Boards of Appeal.

Where the language used is not available for lodging the appeal, revision will not be granted.

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Where essential indications such as the applicant’s name and address are missing or there is no signature or authorisation, revision will not be granted.

2.3 Verification whether the appeal is well founded

The competent division has to verify whether the appeal is well founded.

2.3.1 Situations where the initial decision may be rectified

The relevant date for assessing whether the appeal is well founded is that on which the competent division examines whether or not revision can be granted.

The appeal is well founded where the contested decision was incorrect.

2.3.2 Situations where, although the appeal is well founded, revision may not be granted

Articles 7(3), 37(1) CTMR Rules 9, 11 and 13 CTMIR

Revision may be gr anted only if the objections raised by the Office are completely overcome.

For example, an appeal may not be revised where the CTM applicant only partially removes the deficiencies pointed out by the Office.

Another example is where the examiner has objected to the list of goods and services and the CTM applicant files a new list of goods and services that fails to completely overcome the examiner’s objections and requires further examination.

A further example is when the Office has rejected a C TM application on absolute grounds but in its appeal the CTM applicant argues that the mark has acquired distinctiveness through use, which then requires proof.

Revision is not available when granting it would merely re-open but not resolve the issue. Revision need not necessarily result in a positive decision on the main issue (for example, in the case of a CTM application, in registration or at least publication): it may grant relief to the appellant insofar as it seeks to reverse a decision. When determining whether revision would grant the requested relief, the contested decision and the reasons on which it is based are taken as the basis.

2.4 Impact of a request for restitutio in integrum

Articles 60, 81 CTMR

Revision may not be granted where a notice of appeal, or a written statement of the grounds of appeal, was not filed in time but is accompanied by a request for restitutio in integrum seeking restoration of the two-month time limit for lodging an appeal or filing

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the statement of grounds. The appeal will be remitted to the Boards of Appeal without delay.

2.5 Decision to grant revision

Article 61(2) CTMR Rules 51 and 52 CTMIR

If the competent division concludes that revision should be granted, it must take a decision to this effect within one m onth of receipt of the statement of grounds of appeal.

2.5.1 Deadline for taking the decision

The decision must be dispatched at the latest on the last day of the time limit. It does not matter whether the date of notification of the decision is after that date. If, for example, the decision is notified by registered mail, the registered letter must be posted at the latest on the last day of the time limit.

2.5.2 Contents of the decision

The contents of the decision must at least provide for the annulment of the initial decision and may provide for further treatment of the case – for example, that the CTM application be registered or the registration of transfer applied for be entered in the files of the CTM application.

The decision must also state whether or not the appeal fee is reimbursed.

Reimbursement of the appeal fee is ordered only if equitable by reason of a substantial procedural violation. The basic consideration is whether or not the Office was at fault on the date on which the contested decision was taken. If the contested decision is found to be incorrect in itself, reimbursement is granted. If the contested decision was correct on the date on which it was taken, no reimbursement is granted unless it is established that a doc ument or observation removing the deficiency raised by the Office was actually received by the Office prior to the decision but not included in the file in time.

Where the appeal fee has been paid through a current account, the current account holder is reimbursed through that same account. Where it has not yet been debited, the decision will state that no appeal fee will be debited.

2.6 Appeal against the decision

Article 58 CTMR

Decisions to grant revision cannot be appealed.

A decision not to reimburse the appeal fee may be appealed separately.

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2.7 Communication of the decision

Once revision is granted, the competent division informs the Registrar of the Boards of Appeal accordingly.

3 Procedure where Revision is not Granted

Article 61(2) CTMR

When the competent division concludes that the conditions for granting revision are not met, and at the latest upon expiry of the one-month time limit provided for in Article 61(2) CTMR, the competent division must remit the case to the Boards of Appeal without any comment or statement.

When the competent division remits the case without comments, no decision has to be taken to refuse revision.

Restitutio in Integrum

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS)

PART A

GENERAL RULES

SECTION 8

RESTITUTIO IN INTEGRUM

Restitutio in Integrum

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Table of Contents

1 General Principles ..................................................................................... 3

2 Criteria for Granting restitutio .................................................................. 3 2.1 The condition of ‘all due care required by the circumstances’ ...............3 2.2 Loss of rights or means of redress caused directly by failure to meet

the time limit ...............................................................................................5

3 Procedural aspects ................................................................................... 5 3.1 Proceedings to which restitutio applies ...................................................5 3.2 Parties .........................................................................................................6 3.3 Time limit for national offices to forward an application to the Office ...6 3.4 Time limits excluded from restitutio in integrum .....................................6 3.5 Effect of restitutio in integrum...................................................................7 3.6 Time limit ....................................................................................................7 3.7 Fee...............................................................................................................8 3.8 Languages ..................................................................................................8 3.9 Particulars and Evidence ...........................................................................8 3.10 Competence................................................................................................9 3.11 Publications................................................................................................9 3.12 Decision, role of other parties in restitutio proceedings .........................9

4 Third-Party Proceedings......................................................................... 10

Restitutio in Integrum

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1 General Principles

Article 81 CTMR Article 67 CDR

Parties to proceedings before the Office may have their rights reinstated (restitutio in integrum) if they were unable to meet a time limit vis-à-vis the Office, despite taking all due care as required by the circumstances, provided that the failure to meet the time limit had the direct consequence, by virtue of the provisions of the Regulations, of causing a loss of rights or loss of means of redress (judgment of 28/06/2012, T-314/10, ‘Cook’, paras 16 and 17).

Observing time-limits is a matter of public policy and granting restitutio in integrum can undermine legal certainty. Consequently, the conditions for the application of restitutio in integrum have to be interpreted strictly (judgment of 19/09/2012, T-267/11, ‘VR’, para. 35).

Restitutio in integrum is only available upon ap plication to the Office and there is a charge for this.

If the party is represented, the representative’s failure to take all due care is attributable to the party that it represents (judgment of 19/09/2012, T-267/11, ‘VR’, para. 40).

2 Criteria for Granting restitutio

There are two requirements for restitutio in integrum (judgment of 25/04/2012, T-326/11, ‘BrainLAB’, para. 36):

a) that the party has exercised all due care required by the circumstances,

b) and that the non-observance (of a deadl ine) by the party has the direct consequence of causing the loss of any right or means of redress.

2.1 The condition of ‘all due care required by the circumstances’

Rights will be re-established only under exceptional circumstances that cannot be predicted from experience (judgment of 13/05/2009, T-136/08, ‘Aurelia’, para. 26) and which are therefore unforeseeable and involuntary.

a) Examples of where the ‘all due care’ requirement has been fulfilled

In principle, failure to deliver by the postal or delivery service does not involve any lack of due care by the party concerned (decision of 25/06/2012, R 1928/2011-4, ‘Sun Park Holidays’). However, it is up to the parties’ representatives at least to find out in advance from their delivery company what the usual delivery times are (in the case of letters sent from Germany to Spain in decision of 04/05/2011, R 2138/2010-1 – ‘Yellowline’).

The degree of due care that the parties must demonstrate in order to have their rights re-established must be determined in the light of all the relevant circumstances.

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Relevant circumstances may include a relevant error made by the Office and its repercussions. Thus, even though the party concerned has failed to take all due care, a relevant error by the Office may result in the granting of restitutio (judgment of 25/04/2012, T-326/11, ‘BrainLAB’, para. 57 and para. 59).

Circumstances such as natural disasters and general strikes are regarded as fulfilling the requirement for all due care.

b) Examples of where the ‘all due care’ requirement has NOT been fulfilled

Errors in the management of files caused by the representative’s employees or by the computerised system itself are foreseeable. Consequently, due c are would require a system for monitoring and detecting any such errors (judgment of 13/05/2009, T-136/08, ‘Aurelia’, para. 18).

‘The exceptional workload and organisational strains to which the applicants claim they were subject as a result of the entry into force of Regulation No 40/94 are irrelevant in that connection’ (judgment of 20/06/2001, T-146/00, ‘DAKOTA’, para. 62.)

An erroneous calculation of the time limit does not constitute an exceptional event that cannot be predicted from experience (decision of 05/07/2013, R 0194/2011-4 – ‘PayEngine’).

An error by the Renewals Department Manager, who monitors staff performance daily, does not constitute an exceptional event (decision of 24/04/2013, R 1728/2012-3, - ‘Part of lifting device’).

The absence of a key member of the Accounts Department cannot be regarded as an exceptional or unforeseeable event (decision of 10/04/2013, R 2071/2012-5 – ‘Starforce’).

A clerical error in entering a deadline cannot be regarded as an exceptional or unforeseeable event (decision of 31/01/2013, R 0265/2012-1 – ‘Kansi’).

A misunderstanding of the applicable law may not, as a matter of principle, be regarded as an ‘obstacle’ to compliance with a time limit (decision of 14/06/2012, R 2235/2011-1 – ‘KA’).

Delay by the owner in providing instructions is not an exceptional event (decision of 15/04/2011, R 1439/2010-4 – ‘Substral Nutri + Max’).

Financial problems at the proprietor’s business, its closure and the loss of jobs cannot be accepted as a reason for the proprietor not to be able to observe the time-limit to renew its Community trade mark (decision of 31/03/2013, R 1397/2010-1 – ‘Captain’).

Legal errors by a professional representative do not warrant restitutio (decision of 16/11/2010, R 1498/2010-4 – ‘Regine’s’). The deletion of a deadline by an assistant is not unforeseeable (decision of 28/06/2010, R 0268/2010-2 – ‘Orion’).

Restitutio in Integrum

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2.2 Loss of rights or means of redress caused directly by failure to meet the time limit

Article 81(1) CTMR

Failure to meet the time limit must have had the direct consequence of causing the loss of rights or means of redress (judgment of 15/09/2011, T-271/09, ‘Romuald Prinz Sobieski zu Schwarzenberg’, para. 53).

Articles 42(2), 76(2) and 77(1) CTMR Rule 19, and Rules 20(1)-(5) and 40(1)-(3) CTMIR

This is not the case where the Regulations offer procedural options that parties to proceedings are free to use, such as requesting an oral hearing, requesting that the opponent prove genuine use of its earlier mark, or applying for an extension of the cooling-off period, pursuant to Rule 19 CTMIR. The cooling-off period itself is not subject to restitutio either because it is not a time limit by which a party must perform an action.

Article 36(1), (4), and Article 37 CTMR Rule 9(3), (4), Rule 10 and Rule 11(1) (3) CTMIR

On the other hand, restitutio in integrum does apply to the late response to an examiner’s notification of refusal if the application is not rectified by the time limit specified because in this case there is a direct relationship between failure to meet the time limit and possible refusal.

Restitutio is also available for the late submission of facts and arguments and late filing of observations on the other party’s statements in inter partes proceedings if and when the Office refuses to take them into account as being filed too late. The loss of rights in this case involves the exclusion of these submissions and observations from the facts and arguments on which the Office bases its decision. (In principle, the Office will disregard any statements filed in inter partes proceedings after the deadline has passed.)

3 Procedural aspects

Article 81(2) CTMR Rule 83(1)(h) CTMIR Article 67(2) CDR Article 68(1)(g) CDIR

3.1 Proceedings to which restitutio applies

Restitutio is available in all proceedings before the Office.

This includes proceedings under the CTMR and proceedings concerning registered Community designs under the CDR. The respective provisions do not differ materially.

Restitutio in Integrum

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Restitutio is available in ex parte proceedings, inter partes proceedings and appeal proceedings.

For restitutio in relation to the missed time limit for lodging an appeal and in relation to revision, see the Guidelines, Part A, General Rules, Section 7, Revision.

3.2 Parties

Article 81 CTMR Article 67 CDR

Restitutio is available to any party to proceedings before the Office - not only to the applicant for, or holder or proprietor of, a Community trade mark or the applicant for, or holder of, a registered Community design, but also to the opponent, the applicant for a declaration of revocation or invalidity, or an alleged infringer who is joined as a party to invalidity proceedings pursuant to Article 54 CDR.

The time limit must have been missed by the party concerned or their representative.

3.3 Time limit for national offices to forward an application to the Office

Article 25(2) CTMR Articles 35(1) and 38(2) CDR

The time limit of one month for transmission of a CTM application or two months for transmission of a Community design application filed at a national Office has to be observed by the national Office and not by the applicant and is consequently not open to restitutio in integrum.

Under Article 38(2) CDR, late transmission of a Community design application has the effect of postponing the date of filing to the date the Office actually receives the relevant documents.

Furthermore, if the time limit under Article 25(3) CTMR for transmission of a C TM application is not met, rather than considering the CTM application as having been withdrawn, the Office will treat the CTM application as if it had a rrived at the Office direct from the applicant and not via a national Office. As a result, the filing date will be the date OHIM actually receives it.

3.4 Time limits excluded from restitutio in integrum

Article 81(5) CTMR Article 67(5) CDR

In the interest of legal certainty, restitutio in integrum is not applicable to the following time limits.

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Articles 29(1) and 81(5) CTMR Rule 6(1) CTMIR Articles 41(1) and 67(5) CDR Article 8(1) CDIR

• The priority period, which is the six-month time limit for filing an application claiming the priority of a previous trade mark or design application pursuant to Article 29(1) CTMR or Article 41(1) CDR. However, restitutio does apply to the three-month time limit for providing the file number of the previous application and filing a copy of it, as specified in Rule 6(1) CTMIR or Article 8(1) CDIR.

Articles 41(1), (3) and 81(5) CTMR

• The time limit for filing an opposition pursuant to Article 41(1) CTMR, including the time limit for paying the opposition fee referred to in Article 41(3) CTMR.

Article 81(2), (5) CTMR Article 67(2), (5) CDR

• The time limits for restitutio itself, namely:

○ a time limit of two months for filing the application for restitutio in integrum as from the removal of the cause of non-compliance

○ a time limit of two months from the date for completing the act that was omitted

○ a time limit of one year for filing the application for restitutio in integrum as from expiry of the missed time limit.

3.5 Effect of restitutio in integrum

Granting restitutio in integrum has the retroactive legal effect that the time limit that was not met will be considered to have been met, and that any loss of rights in the interim will be deem ed never to have occurred. If the Office takes a decision in the interim based on failure to meet the time limit, that decision will become void, with the consequence that, once restitutio is granted, there is no longer any need to lodge an appeal against such a decision of the Office in order to have it removed. Effectively, restitutio will re-establish all the applicant’s rights.

3.6 Time limit

Articles 47(3) and 81(2) CTMR Articles 13(3) and 67(2) CDR

Applicants must apply for restitutio in integrum in writing and send the application to the Office.

The applicant must make the application within two months of the removal of the cause of non-compliance and no later than one year after expiry of the missed time limit.

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Within the same period, the act that was omitted must be completed. The date when the cause of non-compliance is removed is the first date on which the party knew or should have known about the facts that led to the non-observance. If the ground for non-compliance was the absence or illness of the professional representative dealing with the case, the date on which the cause of non-compliance is removed is the date on which the representative returns to work. If the applicant fails to submit a request for renewal or to pay the renewal fee, the one-year time limit starts on the day on which the protection ends, and not on the date the further six-month time limit expires.

3.7 Fee

Article 81(3) CTMR Article 2(19) CTMFR Article 67(3) CDR Annex, point 15 CDFR

The applicant must also pay the fee for restitutio in integrum within the same time limit (see paragraph 3.6). If the applicant does not pay the fee by the expiry of the time limit, the application for restitutio in integrum will be deemed not to have been filed.

3.8 Languages

Article 119 CTMR Rule 95 CTMIR Article 98 CDR Article 80 CDIR

The applicant must submit the application for restitutio in integrum in the language, or in one of the languages, of the proceedings in which the failure to meet the time limit occurred. For example, in the registration procedure, this is the first language indicated in the application; in the opposition procedure, it is the language of the opposition procedure; and in the renewal procedure, it is any of the Office’s five languages.

3.9 Particulars and Evidence

Articles 78 and 81 CTMR Articles 65 and 67 CDR

In its application for restitutio the applicant must state the grounds on which it is based and set out the facts on which it relies. As granting restitutio is essentially based on facts, it is advisable for the requesting party to adduce evidence by means of sworn or affirmed statements.

Moreover, the act that was omitted must be completed, together with the application for restitutio, at the latest by the time limit for submitting the application for restitutio.

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3.10 Competence

Article 81 CTMR Article 67 CDR

The division or department competent to decide on the act that was omitted (i.e. responsible for the procedure in which failure to meet the deadline occurred) is responsible for dealing with applications for restitutio.

3.11 Publications

Article 81(7) CTMR Rule 30(4), (5), Rule 84(3)(k), (l) and Rule 85(2) CTMIR Article 67 CDR Article 22(4), (5), Article 69(3)(m), (n) and Article 70(2) CDIR

The CTMR and C DR provide for a mention of the re-establishment of rights to be published in the Bulletin. This mention will be published only if the failure to meet the time limit that gave rise to the application for restitutio has actually led to publication of a change of status of the CTM or CD application or registration, because only in such a case would third parties be able to take advantage of the absence of such rights. For example, the Office will publish a mention that restitutio has been granted if it published a mention that registration had expired due to failure to meet the time limit for paying the renewal fee.

In the event of such a publication, a c orresponding entry will also be made in the Register.

No mention of receipt of an application for restitutio will be published.

3.12 Decision, role of other parties in restitutio proceedings

Articles 58 and 59 CTMR

The applicant for restitutio in integrum is the sole party to the restitutio proceedings, even where failure to meet the time limit occurred in inter partes proceedings.

The decision on restitutio will be taken, if possible, in the decision terminating the proceedings. If, for specific reasons, the Office makes an interim decision on the application for restitutio, it will generally not allow a separate appeal. The applicant for restitutio can appeal the refusal of its request for restitutio together with an appeal against the decision terminating the proceedings.

The decision to grant restitutio cannot be appealed.

The other party to inter partes proceedings will be i nformed that restitutio has been requested and about the outcome of the proceedings. If restitutio is actually granted, the other party’s only means of redress is to initiate third-party proceedings (see below, paragraph 4).

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4 Third-Party Proceedings

Article 81 CTMR Article 67 CDR

A third party who, in the period between the loss of right and publication of the mention of the re-establishment of rights,

• has, in good faith, put goods on the market or supplied services under a sign that is identical or similar to the CTM, or

• in the case of a Community design, has, in good faith, put on the market products in which a des ign included within the scope of protection of the RCD is incorporated or to which it is applied,

may bring third-party proceedings against the decision re-establishing the rights of the applicant, proprietor or holder of the CTM or RCD.

This request is subject to a two-month time limit which starts:

• on the date of publication, where publication has taken place,

• on the date on which the decision to grant restitutio took effect, where publication has not taken place.

The Regulations do not contain any provisions governing this procedure. The department or unit that took the decision to re-establish the rights is responsible for third-party proceedings. The Office will conduct adversarial inter partes proceedings.

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART A

GENERAL RULES

SECTION 9

ENLARGEMENT

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Table of Contents

1 Introduction................................................................................................ 3

2 Rules Concerning Examination................................................................ 3 2.1 Automatic Extension of CTMs to New Member States ............................3 2.2 Pending CTM Applications ........................................................................3 2.3 Distinctiveness Acquired Through Use ....................................................4 2.4 Bad Faith.....................................................................................................4 2.5 Conversion..................................................................................................5 2.6 Other Practical Consequences..................................................................5

2.6.1 Filing at national Offices ................................................................................. 5 2.6.2 Professional representation............................................................................ 5 2.6.3 First and second language ............................................................................. 5 2.6.4 Translation ...................................................................................................... 5 2.6.5 Seniority.......................................................................................................... 6 2.6.6 Search ............................................................................................................ 6

3 Rules Concerning Oppositions and Cancellations................................. 6

Annex 1 ............................................................................................................. 9

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1 Introduction

This chapter discusses the rules relating to the accession of new Member States to the European Community and t he consequences for holders of Community trade marks. Both absolute and relative grounds are dealt with in this chapter.

Article 165 CTMR contains the relevant provisions relating to enlargement and Community trade marks. These provisions were introduced into the Regulation pursuant to the 2004 enlargement process (at that time Article 147a CTMR) and have remained unchanged during successive enlargement processes. The only modification in the text of the Regulation is the addition of the names of the new Member States.

A table in Annex 1 lists the new Member States along with their accession dates and official languages.

2 Rules Concerning Examination

2.1 Automatic Extension of CTMs to New Member States

Article 165(1) CTMR lays down the basic rule of enlargement, which is that all existing CTM applications and registered CTMs are automatically extended to the new Member States without any kind of additional intervention by OHIM, any other body or the holders of the rights concerned. There is no need to pay any extra fees or complete any other administrative formality. The extension of existing CTM applications or CTMs to the territories of new Member States ensures that these rights have equal effect throughout the EU and complies with the fundamental principle of the unitary character of the CTM.

2.2 Pending CTM Applications

Article 165(2) CTMR enshrines an important transitional provision, according to which CTM applications pending on the accession date may not be refused on the basis of any absolute ground for refusal if this ground becomes applicable merely because of the accession of a new Member State (‘grandfathering clause’). In practice, this means that if a CTM application is non-distinctive, descriptive, generic, deceptive or contrary to public policy or morality in the language or in the territory of a new Member State, it will not be refused if its filing date is before this State’s accession date.

For applications filed after the accession date the grounds for refusal of Article 7(1) CTMR apply also for the new Member State. This is the case even when the CTM application has a pr iority date which is earlier than the relevant accession date. The priority right does not protect the CTM applicant against any change in the law relevant to its application. Therefore, examiners have to apply the same examination criteria as for all the other official languages of the EU. This means that the examiner has to check if the CTM application is descriptive, etc. also in the new Member State.

However, this principle should be appl ied with caution as it merely means that the criteria for applying Article 7(1) CTMR should not be made stricter as a result of the accession of new Member States. The inverse conclusion that terms which are descriptive in a language or in the territory of a new Member State may, in any case, be registered for CTM applications filed prior to the accession date will not always be

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correct. For example, descriptive terms from new Member States’ languages may have entered the customary languages of existing Member States or be widely known in them (for example, Vodka), and geographical indications may already have to be refused as descriptive terms (for example, Balaton or Tokaj). Consideration must also be given to geographical indications already protected in the new Member States and to protection arising from Community legislation or bilateral treaties between the new Member States and the EU or existing Member States.

More precisely, the grounds for refusal of Article 7(1)(f) and (g) CTMR, relating to marks contrary to public policy or morality and deceptive marks respectively, are only affected by this provision insofar as the deceptiveness or breach of public morality is due to a meaning which is only understood in a language of a new Member State. The Office interprets Article 7(1)(f) CTMR in accordance with Community-wide criteria, irrespective of the relative levels of morality in different countries of the EU.

Finally, the provision of Article 165(2) CTMR does not affect the grounds for refusal of Article 7(1)(e) or (i) CTMR: the former relates to signs consisting exclusively of the shape of the goods themselves, the shape which is necessary to obtain a t echnical result or the shape which gives substantial value to the goods, and the latter relates to badges and emblems not protected by Article 6ter of the Paris Convention but of particular public interest.

2.3 Distinctiveness Acquired Through Use

According to Office practice, distinctiveness acquired through use (Article 7(3) CTMR) must exist on t he CTM filing date and subsist until its registration date. Where an applicant for a CTM application filed before the accession date is able to demonstrate that acquired distinctiveness existed at the filing date, Article 165(2) CTMR precludes an objection based on the ground that it is not distinctive through use in the new Member States. Therefore, the applicant does not have to prove acquired distinctiveness in the new Member States.

2.4 Bad Faith

The Office will consider the filing of a CTM application as having been made in bad faith if it was made prior to the accession date for a term which is descriptive or otherwise not eligible for registration in the language of a new Member State for the sole purpose of obtaining exclusive rights to a non-registrable term or for otherwise objectionable purposes.

This has no pr actical effect during the examination stage as bad faith does not constitute an absolute ground for refusal and, consequently, the Office has no authority to object ex officio. The Office will exercise its duties in respect of ‘bad faith filings’ only when a r equest for a declaration of invalidity is filed (Article 52(1)(b) CTMR). The national Offices of the new Member States are equally determined to act against bad faith in the context of enlargement. CTM applicants should, therefore, bear in mind that, even if there are no grounds for refusal during the registration procedure, their CTM registrations may be contested at a later date on the basis of Article 52(1)(b) CTMR.

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2.5 Conversion

Conversion of a CTM application into national trade mark applications for new Member States may be r equested as from the accession date of those States. Conversion is also possible when a converted CTM has a filing date prior to the accession date. However, in the case of a new Member State, the converted application will have the effect of an earlier right under national law. National law in new Member States has enacted provisions equivalent to Article 165 CTMR providing that extended CTMs have the effect of earlier rights in the new Member States only with effect from the accession date. In practice, this means that the ‘conversion date’ in a new Member State cannot be earlier than that State’s accession date.

Taking Croatia´s accession as an example, this means that even if a converted CTM has a filing date of 01/05/2005 in Croatia, the conversion date will not be 01/05/2005 but 01/07/2013, that is, Croatia’s accession date.

The date of enlargement does not trigger a new three-month time limit for requesting conversion under Article 112(4) CTMR.

2.6 Other Practical Consequences

2.6.1 Filing at national Offices

As from the accession date of a new Member State, a CTM application may also be filed through that State’s national Office.

2.6.2 Professional representation

As from the accession date of a new member State, applicants (as well as other parties to proceedings before the Office) having their seat or domicile in that State need no longer be represented by a professional representative. As from the accession date of a new Member State, professional representatives from that State may be entered on the list of professional representatives maintained by the Office pursuant to Article 93 CTMR and may then represent third parties before the Office.

2.6.3 First and second language

As of the accession date of a new Member State (see Annex 1), the official language(s) of that State may be used as the first language for CTM applications filed on or after that date.

2.6.4 Translation

CTM applications with a filing date prior to the accession date of a new Member State and existing CTM registrations will be neither translated into nor republished in the language of that State. CTM applications filed after the accession date of a new Member State will be translated into and published in all official languages of the EU.

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2.6.5 Seniority

Seniority may be claimed from a national trade mark which was registered before the accession of the new Member State in question or even before the creation of the European Union. The seniority claim may, however, only be made after the accession date. The mark registered in the new Member State must be ‘earlier’ than the CTM. As an extended CTM has, in the new Member State, the effect of an earlier right as from the accession date, the seniority claim only makes sense when the earlier national mark has a filing or priority date prior to the accession date.

Example 1: The same person files a CTM application on 01/04/1996 and a nat ional trade mark application in Romania on 01/01/1999. After 01/01/2007 (Romania’s date of accession) the seniority of the Romanian national trade mark application may be claimed.

Example 2: The same person owns an international registration designating the EU on 01/01/2005 and s ubsequently designating Romania on 01/01/2006. After 01/01/2007, the seniority of that Romanian designation may be c laimed even though the designation itself is later than the IR designating the EU. This is because the extended CTM takes effect from the accession date of the new Member State (in this case 01/01/2007).

2.6.6 Search

The national Offices of a new Member State may carry out searches (Article 38(2)(3) CTMR) as from that State’s accession date. Only CTM applications with a filing date on or after the accession date are sent to national Offices for a search.

3 Rules Concerning Oppositions and Cancellations

1. According to Article 165(4)(b) CTMR, a CTM application cannot be opposed or declared invalid on the basis of a national earlier right acquired in a new Member State prior to that State’s accession date.

However, CTM applications filed on or after the accession date are not subject to this ‘grandfathering clause’ and may be rejected upon opposition, or declared invalid, on account of an earlier national right existing in a new Member State, provided that the earlier right is ‘earlier’ when the two filing or priority dates are compared.

2. An exception to this (transitional) rule is contained in Article 165(3) CTMR regarding oppositions. A CTM application, filed within the six months preceding the accession date, may be challenged by an opposition based on a national right existing in a new Member State at the date of the accession, provided that this right

a) has an earlier filing or priority date and b) was acquired in good faith.

3. The filing date and not the priority date is the decisive element for determining when a CTM application can be opposed on the basis of an earlier right in a new Member State. In practice, the abovementioned provisions have the

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consequences illustrated in the following examples with reference to the accession of Croatia (01/07/2013):

a) A CTM application filed before 01/01/2013 (the priority date is irrelevant in this context) cannot be opposed or declared invalid on the basis of a national earlier right in a new Member State under any circumstances.

b) A CTM application with a filing date between 01/01/2013 and 30/06/2013 (i.e. during the six months prior to the date of accession), may be opposed by a Croatian trade mark, provided that the filing or priority date of the Croatian trade mark is earlier than the filing or priority date of the opposed CTM application and t he national mark was applied for in good faith.

c) A CTM application with a filing date of 01/07/2013 or later may be opposed or declared invalid on the basis of a trade mark registered in Croatia if that mark has an earlier filing or priority date under the normal rules. Acquisition in good faith is not a condition. This applies to all national marks and earlier non-registered rights filed or acquired in a new Member State prior to accession.

d) A CTM application with a filing date of 01/07/2013 or later but with a priority date before 01/07/2013 may be opposed or declared invalid on the basis of a national trade mark registered in Croatia if that mark has a an earlier filing or priority date under the normal rules.

This transitional exception is limited to the right to file an opposition and does not include the right to file an application for cancellation based on relative grounds. This means that once the abovementioned period of six months has expired without an opposition having been lodged, the CTM application cannot be challenged any more by an oppos ition or by an application for a declaration of invalidity.

4. According to Article 165(5) CTMR, the use of a CTM with a filing date prior to the date of accession of a new Member State, may be pr ohibited pursuant to Articles 110 and 111 C TMR on t he basis of an earlier national trade mark registered in the new Member State where the latter has a filing or priority date prior to the date of accession and was registered in good faith.

The above provision also applies to:

• applications for national marks filed in new Member States, provided that they have subsequently been registered,

• unregistered rights acquired in new Member States falling under Article 8(4) or Article 53(2) CTMR with the proviso that the date of acquisition of the right under national law replaces the filing or priority date.

5. Where an oppos ition is based on a nat ional registered mark or other right in a new Member State, whether or not that right may be validly invoked as a ground for opposition against a CTM application depends on whether the opposition is well founded and is not an issue of admissibility.

6. The acquisition in good faith of the earlier national mark is presumed. This means that, if good faith is questioned, the other party to the proceedings (the applicant

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for the opposed CTM application in the case of Article 165(4) CTMR or the owner of the registered CTM in the case of Article 165(5) CTMR) must prove that the owner of the earlier national right obtained in a new Member State acted in bad faith when filing the national application or otherwise acquiring the right.

7. Article 165 CTMR does not contain any transitional provisions concerning the use requirement (Articles 15 and 42 CTMR). In opposition proceedings, the obligation to make genuine use of the mark arises when the applicant for the opposed CTM application requests that the opponent prove use of the earlier mark pursuant to Article 42(2) and (3) CTMR and Rule 22 CTMIR. Issues relating to enlargement could arise regarding the time and place of use of the earlier mark.

Two cases can be distinguished:

a) The earlier mark is a national mark registered in a new Member State

In this case the opponent must prove genuine use of the earlier mark. This situation can only arise in the context of an opposition directed either against a CTM application with a filing date after the date of accession or against a CTM application filed within the period of six months preceding the date of accession.

The earlier national mark must have been put to genuine use in the territory in which it is protected during the five years preceding the date of publication of the opposed CTM application. In this regard, it is immaterial whether the use relates to a per iod during which the State concerned was already a Member of the European Union. In other words, the proof of use may relate also to a period prior to the date of accession (in the case of Croatia before 01/07/2013).

b) The earlier mark is a CTM

Where the owner of the earlier CTM can prove use only in the territory of a new Member State or several new Member States, since the obligation of use relates to the period of five years preceding the date of publication of the opposed CTM application, use in a new Member State (or several new Member States) can only be taken into account if the State concerned was a Member State of the European Union at the date of publication of the opposed CTM application (Article 43(1) CTMR requires use ‘in the Community’ ).Before their accession dates, the new States do not constitute ‘Member States of the Community’; therefore, it is not possible to prove use ‘in the Community’.

Therefore, the five-year period should be counted only from the relevant date of accession.

8. There are no par ticular transitional problems relating to the opposition proceedings. The right pursuant to Article 119(7) CTMR to choose a l anguage which is not one of the five languages of the Office as the language of the proceedings applies as from the date of accession in respect of the other official languages of the European Union.

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Annex 1

Member States Accession date Languages Czech Republic, Cyprus, Estonia, Latvia, Lithuania, Hungary, Malta, Poland, Slovakia, and Slovenia).

01/05/2004 Czech, Estonian, Hungarian, Latvian, Lithuanian, Maltese, Polish, Slovak and Slovenian

Bulgaria and Romania 01/01/2007 Bulgarian and Romanian

Croatia 01/07/2013 Croatian

Proceedings

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART B

EXAMINATION

SECTION 1

PROCEEDINGS

Proceedings

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Table of Contents

1 Introduction: General Overview of Examination Proceedings ................ 3

2 Search........................................................................................................... 4 2.1 Community search....................................................................................... 4 2.2 National search ............................................................................................ 4

3 General Principles Concerning Examination Proceedings...................... 5 3.1 Procedural aspects concerning third-party observations and review of

absolute grounds......................................................................................... 5 3.2 Decisions...................................................................................................... 6

3.2.1 Appeals ............................................................................................................. 6

3.3 International registrations designating the European Union.................... 6

4 Publication ................................................................................................... 7

5 Amendments to the CTM Application ........................................................ 7 5.1 Withdrawal of the CTM application............................................................. 8

5.1.1 Declaration of withdrawal.................................................................................. 8 5.1.2 Unconditional and binding character of the declaration ................................... 9 5.1.3 Action to be taken ............................................................................................. 9

5.2 Restriction of the list of goods and services in a CTM application.......... 9 5.2.1 Procedural admissibility of a restriction ............................................................ 10

5.3 Other amendments ...................................................................................... 10 5.3.1 Name, address and nationality of applicant or representative ......................... 11 5.3.2 Other elements of an application...................................................................... 12 5.3.3 Recording and publication of amendments ...................................................... 12

5.4 Division of the CTM application.................................................................. 12 5.4.1 Requirements ................................................................................................... 13 5.4.2 Acceptance ....................................................................................................... 14 5.4.3 New file and its publication ............................................................................... 14

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1 Introduction: General Overview of Examination Proceedings

This part of the Guidelines outlines the examination procedure from filing to publication of the Community trade mark (CTM) application.

Once the CTM application has been filed, a provisional filing date is accorded, and the Office issues a receipt. At this early stage, the Office only checks whether certain filing date requirements of the Community Trade Mark Regulation (CTMR) have been fulfilled. The filing date will only become definitive when the application fee has been paid.

The applicant should carefully check the receipt and notify the Office of any incorrect data. The applicant can only correct data that have an impact on the filing date, such as the applicant’s name, the representation of the mark and the list of goods and services, if it notifies the Office on the same date as the incorrect data were submitted. After this date, any amendment is subject to the provisions of the CTMR and CTMIR, in particular, Article 17 CTMR and Article 43 CTMR. For further details, see paragraph 5 below and the Guidelines, Part B, Examination, Section 2, Examination of Formalities.

After the receipt has been issued, the Office carries out a language check of the verbal elements of the mark in all the official languages of the EU, followed by a Community search.

Payment of the application fee and national search fee (if applicable) is validated at the latest one month after the CTM application has been filed. If the applicant has applied for a national search and paid the relevant fee, the Office forwards the application to the offices of the Member States that perform national searches. For further information on s earches, see paragraph 2 below. For further information on fees, see the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.

During examination proceedings, the Office examines the following: filing date, formalities, classification, priority and/or seniority, where applicable, the regulations governing use of the mark for collective marks and absolute grounds for refusal. All these examination steps can be carried out in parallel as there is no strict sequence in examination proceedings.

Any deficiency is notified to the applicant, who is given two months within which to remedy the deficiency and/or submit observations. Any decision partially or wholly refusing a CTM application must give the grounds on which the CTM application is refused and inform the applicant of its right to appeal. For further details, see paragraphs 3.2 and 3.2.1 below.

Applications that comply with the requirements of the Regulation are accepted for publication and sent for translation into all the official languages of the EU.

The last step in the examination procedure is publication of the application in Part A of the CTM Bulletin. Publication takes place one month after notification of the search reports (Community search and national search, if requested), giving the applicant the opportunity to abandon its application, if it so wishes. For further details on publication, see paragraph 4 below.

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2 Search

Article 38 CTMR Rule 5a and Rule 10 CTMIR Communications 4/99, 5/00 and 4/01 of the President of the Office

The search report identifies earlier rights that could conflict with the CTM application. However, even if the search report does not indicate any similar earlier rights, an opposition could still be filed against the CTM application after its publication.

The results of the search report are for information purposes only and to give the applicant the option of withdrawing the CTM application before it is published. Surveillance letters inform holders of earlier Community trade marks about new, similar Community trade mark applications.

Figurative elements are classified under the Vienna Classification.

2.1 Community search

After issuing the receipt, the Office draws up a Community search report covering:

1. CTM applications with a filing date or priority date earlier than that of the application in question;

2. Community trade marks already registered; and 3. prior international registrations designating the European Union.

The Community search takes into account the filing date, the verbal elements of the trade mark, the figurative elements of the mark (if applicable) and the classes of goods and services according to the Nice Classification. The search is designed to identify similar earlier marks filed for the same classes or classes considered by the Office to contain similar goods and/or services.

The Community search report is sent to the applicant in a standard letter or electronically. Once the new application has been published, the Office sends a surveillance letter to the holders of earlier Community trade marks or Community trade mark applications cited in the search report.

2.2 National search

CTM applications that include a v alid request for national searches are sent to the participating national offices once a filing date has been accorded and the classification has been validated. A request is valid if it is made at the time of filing and the relevant fee has been paid.

National search reports are prepared by offices that participate in the search system.

A request for national searches implies that all participating national offices will carry out the search within two months in accordance with Rule 5a CTMIR. This all-or-nothing approach means that the applicant cannot select the particular participating offices that it wishes to carry out the search.

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Holders of international registrations (IR) designating the EU that wish to apply for national searches must send the request and pay the relevant fee to OHIM within one month of the date of notification of the IR from the World Intellectual Property Organization (WIPO).

The national offices are responsible for the format and content of the national search report. The Office’s role is limited to receiving the national reports and forwarding them, together with the Community search report. The applicant is free to request further information directly from the national offices.

3 General Principles Concerning Examination Proceedings

This section describes only the procedural aspects of examining Absolute Grounds (AG) for refusal. For substantive aspects of examining Absolute Grounds for refusal, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal, Collective Marks, Acquired Distinctiveness.

The CTMR is intended to enable proprietors to register a right that is valid throughout the European Union provided it does not impinge on the rights of others. Although rights can only be conferred in accordance with the provisions of the CTMR, the Office’s function is to facilitate applications, not obstruct them.

During the examination of each application, the trade mark and the goods or services of the application must be taken into account. The Office has to bear in mind the nature of the trade concerned, the manner in which the goods or services are provided and the relevant public, for example whether specialists or the general public.

3.1 Procedural aspects concerning third-party observations and review of absolute grounds

Article 40 CTMR Communication 2/09 of the President of the Office

Observations on the existence of an absolute ground for refusal can be made by third parties once an application has been published. Third-party observations received before a CTM application has been published are dealt with during the examination of absolute grounds for refusal. The Office accepts observations received within the opposition period (three months from the date of publication) or filed before pending oppositions are closed. The observations must be filed in one of the Office’s languages: English, French, German, Italian or Spanish.

The Office issues a receipt to the party that submitted the observations (the observer), confirming that the observations have been received and have been forwarded to the applicant. The observer does not become a party to the proceedings before the Office but can consult the online search tools to check the status of the relevant CTM application. The Office does not inform the observer of any action taken, or whether or not the observations have given rise to an objection.

All observations are forwarded to the applicant, who is invited to submit comments, where appropriate. The Office considers whether the observations are well founded, that is, whether an absolute ground for refusal exists. If so, the Office issues an objection and may refuse the CTM application if the objection is not overcome by the applicant’s comments or by a restriction of the list of goods and services.

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If an issue raised in observations has already been considered during the examination of an application, it is unlikely to give rise to serious doubts after publication.

The Office may also re-open the examination on absolute grounds on any other ground and at any time prior to registration, for example when third-party observations are filed before the application is published or when the Office itself finds that a ground for refusal has been overlooked. After the application is published, this option should be exercised only in clear- cut cases.

For more information, see the Guidelines, Part B, Examination, Section 4, Absolute Grounds for Refusal.

3.2 Decisions

In all cases where the Office issues decisions against applicants, it must give the grounds for the decision. These must address any arguments raised by the applicant in its observations if they are pertinent. Decisions must not only refer to the appropriate parts of the CTMR and CTMIR but also give explicit reasons, except in the most self-evident cases (for example, where a document is missing or a fee has not been paid).

Where, for example, a decision is given on the basis of internet searches, the Office must provide the applicant with proof of those searches.

3.2.1 Appeals

Articles 58 and 65 CTMR Decision 2009-1 of 16/06/2009 of the Presidium of the Boards of Appeal

Applicants have a right to appeal against a decision that terminates proceedings and that adversely affects them. For practical purposes, any decision issued by the Office that terminates proceedings and is not accepted by the applicant falls into this category. Any written communication of such a dec ision must also inform the applicant that the decision can be appealed within two months.

Appeals have suspensive effect. Within the period in which an appeal can be lodged, the Office should not take any steps that cannot easily be reversed (e.g. publication or entry in the Register). The same goes for the period up until a final decision is taken where a case is brought before the General Court (GC) or Court of Justice of the European Union (CJEU) by an action under Article 65.

3.3 International registrations designating the European Union

Details about the examination of a CTM application as a result of the transformation of an international registration designating the European Union are given in the Guidelines, Part M, International Marks.

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4 Publication

Article 39 CTMR Rules 12, 14 and 46 CTMIR

Publication takes place once the search reports have been sent to the applicant, provided that the application fulfils all the acceptance conditions.

Applications are published in all the official languages of the EU.

The examiner must ensure that the following details are available, where applicable:

(a) application file number (b) filing date (c) reproduction of the trade mark (d) indication of the collective mark (e) indication of the mark type other than word marks, for example figurative marks,

three-dimensional marks, holograms, sound marks, colour per se marks and other marks

(f) description of the mark (g) colour indication(s) (h) figurative elements under the Vienna Classification (i) disclaimer (j) acquisition of distinctive character through use (k) applicant’s name, address and nationality (l) representative’s name and address (m) first and second language (n) goods and services under the Nice Classification (o) priority data, if applicable (p) exhibition priority data (q) seniority data (r) transformation data.

Once the examiner has checked that all these elements are correct and the Office has received the translation in all the official languages of the EU, the application is dispatched to the Publication Team.

5 Amendments to the CTM Application

This part of the Guidelines only covers issues that are relevant to CTM application amendments.

For amendments to registered Community trade marks, see the Guidelines, Part E, Register Operations, Section 1, Changes in a registration.

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5.1 Withdrawal of the CTM application

Article 43, Articles 58(1), 64(3), 65(5) and Article 119 CTMR Article 101 and Article 102(2) Rules of Procedure of the General Court (RPGC) Article 51 Rules of Procedure of the Court of Justice (RPCJ)

5.1.1 Declaration of withdrawal

A CTM application can be withdrawn at any time up until a final decision is taken on its subject matter.

After the Office’s first-instance decision, an application can be withdrawn at appeal level within the two-month appeal period, even if no appeal was actually filed or up until the appeal is decided by the Board of Appeal; this applies both to ex parte and inter partes proceedings (decision of 27/09/2006, R 0331/2006-G – ‘Optima’ and decision of 23/04/2014, R 0451/2014-1 – ‘SUPERLITE’, para. 18).

At the level of the General Court (GC), an application can be withdrawn within the two-month appeal period extended by a per iod of ten days (on account of distance) pursuant to Article 102(2) RPGC. At the level of the Court of Justice of the European Union (CJEU), the prescribed time-limit of two months to bring an action before the CJEU against a decision by the Boards of Appeal shall be extended on account of distance by a single period of 10 days (order of 19/07/2003, T-15/03, ‘BLUE’). The Boards of Appeal decision cannot be considered final within this period. The application can also be w ithdrawn up until completion of the appeal process before the GC.

At CJEU level, an application can be withdrawn within the two-month period for filing an appeal before the CJEU extended by a period of ten days (on account of distance) pursuant to Article 51 RPCJ or before the CJEU has issued a final and binding decision (order of 18/09/2012, C-588/11, ‘OMNICARE’).

When the case is pending before the GC or the CJEU, the applicant must ask the Office (not the GC or CJEU) to withdraw it. The Office then informs the GC or CJEU whether or not it finds the withdrawal acceptable and valid, but the withdrawal will not take place until the GC or the CJEU has delivered a final decision on the issue (by analogy, see judgment of 16/05/2013, T-104/12, ‘Vortex’).

Any declaration of withdrawal filed after the expiry of the appeal period is inadmissible.

There is no charge for a declaration of withdrawal but the declaration must be made in writing. No special form is provided by the Office.

The declaration of withdrawal can be made in the first or second language indicated by the applicant in its CTM application. The same applies during opposition proceedings. However, for the procedure in cases where a restriction is made in a language other than the language of the opposition procedure, see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.

For details of restrictions see paragraph 5.2 below.

Although Article 43(1) CTMR refers only to withdrawal of a Community trade mark application, the Court has held that oppositions can also be withdrawn in the same way as described above (decision of 07/07/2014, R 1878/2013-1 - ‘HOT CHILLYS’, para. 15).

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5.1.2 Unconditional and binding character of the declaration

A declaration of withdrawal becomes effective upon receipt by the Office, provided that the Office does not receive a withdrawal of the declaration on the same day. This means that if a declaration of withdrawal and a l etter withdrawing that declaration both reach the Office on the same day (regardless of the actual time of receipt), the latter annuls the former.

Once a declaration becomes effective, it cannot be withdrawn.

A declaration of withdrawal is void where it contains conditions or time limitations. For example, it must not require the Office to take a particular decision or, in opposition proceedings, require the other party to make a procedural declaration. Such a requirement is simply viewed as a suggestion for resolving the case; the Office informs the opponent accordingly and may invite the parties to come to an amicable settlement. Furthermore, a declaration does not become effective if it is made for some goods and/or services (partial withdrawal) on condition that the Office accepts the application for the remaining goods and/or services. Such a declaration is simply viewed as a suggestion to enable the Office to arrive at an acceptable list of goods and services.

Where an applicant responds to an official action by filing a restricted list of goods and services (partial withdrawal), the Office checks whether the applicant is declaring the unequivocal withdrawal of the remaining goods and services or whether the amended list of goods and services is a proposal or counterproposal by the applicant, subject to the Office’s agreement.

5.1.3 Action to be taken

The Office will process a declaration of withdrawal, ensure publication of the full or partial withdrawal in the Bulletin, if the CTM application has already been published and close the CTM application file in the event of a full withdrawal.

For the consequences of full or partial withdrawal on the opposition procedure, see the Guidelines, Part C, Opposition, Section 1, Procedural Matters.

Detailed information on the refund of application fees can be found in the Guidelines, Part A, General Rules, Section 3, Payment of Fees, Costs and Charges.

5.2 Restriction of the list of goods and services in a CTM application

Articles 43 and 119 CTMR

The applicant may restrict the list of goods and services of its CTM application at any time, either of its own volition, in response to an objection regarding classification or absolute grounds, or in the course of opposition proceedings.

In principle, declarations of restrictions follow the same rules as declarations of withdrawals; see paragraph 5.1 above.

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Where the case is pending before the General Court (GC) or the Court of Justice (CJEU), the restriction must be filed with the Office (not with the GC or the CJEU). The Office then informs the GC or the CJEU whether or not it finds the restriction acceptable and valid; however, the restriction is not applied until the GC or the CJEU has delivered a final decision on the issue (by analogy, see judgment of 16/05/2013, T-104/12, ‘Vortex’).

5.2.1 Procedural admissibility of a restriction

The restriction must be procedurally admissible; see paragraph 5.1.2 above.

As a matter of principle, a restriction becomes effective on the date on which the Office receives it. The restriction can only be withdrawn if the withdrawal is received on the same date as the restriction itself.

Two requirements must be met in order for a restriction to be acceptable:

1. The new wording must not constitute an extension of the list of goods and services.

2. The restriction must constitute a valid description of goods and services and apply only to acceptable goods or services that appear in the original CTM application. For further details on restrictions of a CTM application, see the Guidelines, Part B, Examination, Section 3, Classification.

If these requirements are not met, the Office must refuse the proposed restriction and the list of goods and services will remain unchanged (decision of 14/10/2013 R 1502/2013-4 - ‘DARSTELLUNG EINES KREISES’, paras 12-16).

5.3 Other amendments

Article 43(2) CTMR Rules 13 and 26 CTMIR

This paragraph and the legal provisions cited above solely concern amendments to the CTM application requested by the applicant on its own initiative and not amendments or restrictions made following an examination, opposition or appeal procedure as a result of a decision by an examiner, Opposition Division or Board of Appeal.

Nor does this paragraph apply to the correction of errors in the Office’s publications, which is carried out ex officio pursuant to Rule 14 CTMIR.

Amendments require a written request in accordance with the language regime (for more information, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities). There is no charge for this.

The following elements of a CTM application may be amended:

• the name and address of the applicant or representative (see paragraph 5.3.1 below);

• errors of wording or of copying, or obvious mistakes, provided that the correction does not substantially change the trade mark (for further details on such amendments, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities);

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• the list of goods and services (see paragraph 5.2 above).

5.3.1 Name, address and nationality of applicant or representative

Rule 1(1)(b) and (e), Rules 26 and 84 CTMIR Article 1(1)(b), Article 19(7) and Article 69(2)(d) CDIR

The name and address of an applicant or its appointed representative may be amended freely, provided that

• any change in the applicant’s name is not the consequence of a transfer,

and

• as regards the name of a representative, the representative is not being substituted by another representative.

The indication of a legal person’s nationality may also be amended freely, provided that it is not the consequence of a transfer.

A change in an applicant’s name that does not affect the applicant’s identity is an acceptable change, whereas a change in the applicant’s identity is a transfer. For details and the applicable procedure in the event of doubt as to whether the change is considered to be a transfer, see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer.

Changes to a representative’s name are also limited to those that do not affect the identity of the appointed representative, for example where there is a change in the name (through marriage/divorce) of a representative or the name of an association of representatives. Such changes of name must be distinguished from the substitution of one representative by another, which is subject to the rules governing the appointment of representatives. For details concerning representatives, see the Guidelines, Part A, General Rules, Section 5, Professional Representation.

Changes of name, address or nationality may be the result of changed circumstances or of an error made at the time of filing.

The applicant or its representative must request a change of name and address and this request must contain the CTM application number and the name and address of the applicant or representative, both as recorded on the file and as amended.

No proof or evidence of the change is necessary. There is no charge for change of name or address requests.

The applicant must use a specific format in its application to indicate its name and official address in accordance with the aforementioned legal provisions, and may change it later using the same format. Both the name and address will be registered.

Legal persons can have only one official address. In case of doubt, the Office may ask for evidence of the legal form, the state of incorporation and/or address. The official name and address are taken, by default, as the address for service. Ideally, an applicant should have only one addr ess for service. Changes to the applicant’s official designation or official

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address will be registered for all CTM applications, registered Community trade marks and Registered Community Designs and, unlike the address for service, cannot be recorded only for specific portfolios of rights. In principle, these rules also apply, by analogy, to representatives.

5.3.2 Other elements of an application

Other elements of a CTM application may also be changed, such as the representation, type of mark, description of the mark and disclaimers.

For example, in priority claims, obvious mistakes in the indication of the country in which, and the date on which, the earlier mark was filed may be corrected, since the priority document will obviously show the correct version.

For further details on these changes, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities.

5.3.3 Recording and publication of amendments

Article 41(2) CTMR

If an amendment is allowed, it will be recorded in the file.

Where the CTM application has not yet been published, it is published in the CTM Bulletin in the amended form.

Where the CTM application has already been published and (only) if the amendment concerns the list of goods and services or the representation of the mark, the CTM application is published in its amended form in the CTM Bulletin. The publication of the amended application may open a new opposition period of three months.

Any other amendments are not published separately but appear in the publication of the registration.

5.4 Division of the CTM application

Article 44 CTMR Rule 13a CTMIR

A CTM application can be divided into different parts not only as a result of a partial transfer (see the Guidelines, Part E, Register Operations, Section 3, CTMs as Objects of Property, Chapter 1, Transfer), but also on the CTM applicant’s own initiative. Division is particularly useful for isolating a disputed CTM application for certain goods or services while maintaining the original application for the remainder. For information on the division of CTMs, see the Guidelines, Part E, Register Operations, Section 1, Changes in a registration.

Whereas a partial transfer is free of charge and involves a change of ownership, there is a charge for a request for the division of a CTM application, and the CTM application remains in the hands of the same applicant. If the fee is not paid, the request is deemed not to have

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been filed. The request can be made in the first or second language indicated by the applicant in its CTM application.

Division is not available for international registrations under the Madrid Protocol designating the EU. The international register is kept at WIPO, and OHIM does not have the authority to divide an international registration designating the EU.

5.4.1 Requirements

A request for division must contain the following information:

• the file number of the CTM application to be divided;

• the name and address or name and ID number of the applicant;

• the list of goods and services for the divisional application or, if more than one new application will be created, the list of goods and services for each divisional application;

• the list of the goods and services that will remain in the original CTM application.

Furthermore, the goods and services of the divisional application must not overlap with the list of goods and services of the original application.

The Office will notify the applicant of any deficiency in this regard and give it two months to remedy the deficiency. If it is not remedied within this time, the request for division will be refused.

There are certain periods during which, for procedural economy or to safeguard third-party rights, division is not admissible. These periods are outlined below.

1. While an opposition is pending, only the non-contested goods and s ervices may be hived off. The same applies if the case is pending before the Boards of Appeal or the Courts. The Office interprets the legal provisions cited above as preventing the applicant from hiving off some or all of the contested goods to form a new application causing the opposition proceedings to be split. If such a request for division is made, the applicant is given the opportunity to amend it by hiving off the non-contested goods and services.

2. Division is not admissible during the three-month opposition period following publication of the application. Allowing a division during this time would counteract the aim of not splitting an opposition procedure and frustrate third parties, who have to rely on the CTM Bulletin to know what to oppose.

3. Division is not admissible during the period before a filing date has been issued either. This does not necessarily coincide with the first month following filing. For further details on the filing date, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities.

For all practical purposes, in the period following publication of the application, division is only admissible if an opposition has been entered against the application and only for the non-contested part. The aim of the provisions cited is to allow the applicant to register its mark for the non-contested goods quickly, without having to wait for the outcome of a lengthy opposition procedure.

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5.4.2 Acceptance

Article 44(6) CTMR

If the Office accepts the declaration of division, a new application is created as of the date of acceptance and not retroactively as of the date of the declaration.

The new application keeps the filing date and any priority and seniority dates. The seniority effect will then become partial.

All requests and applications submitted, and all fees paid, prior to the date on which the Office receives the declaration of division are also deemed to have been made or paid for the divisional application. However, fees duly paid for the original application are not refunded.

The practical effects of this provision are as follows:

• Where an appl ication for the registration of a l icence was made and payment of the registration fee was received by the Office prior to the declaration of division, the licence will be registered against the original registration and recorded in the file of the new registration. No further fees need be paid.

• Where a CTM application claiming six classes is to be divided into two applications of three classes each, no class fees are payable as of the date the Office receives the declaration of division. However, fees paid prior to that date cannot be refunded.

Where the division is not accepted, the old application remains unchanged. It does not matter whether:

• the declaration of division was deemed not to have been filed because no fee had been paid;

• the declaration was refused because it failed to comply with the formal requirements;

• the declaration was found inadmissible because it was filed during one of the periods in which division is not admissible.

The worst-case scenario for the applicant is that the declaration of division is not accepted, but this never affects the original application. The applicant can repeat the declaration of division later, on payment of a new fee.

5.4.3 New file and its publication

A new file has to be created for the divisional application, to contain all the documents that were on file for the original application, all the correspondence relating to the declaration of division and all future correspondence for the new application. Inspection of this file will be unrestricted under the general rules.

If the declaration of division concerns a CTM application that has not yet been published, both the divisional and t he original application are published separately and i n the normal way, without any express reference to each other.

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If the declaration of division concerns a CTM application that has already been published, the fact that there has been a division is published with reference to the original application. The new application must also be published with all the usual particulars; however, no new opposition period will be opened. Division is admissible only for goods for which an opposition period has already started but not been made use of.

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART B

EXAMINATION

SECTION 3

CLASSIFICATION

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Table of Contents

1 Introduction................................................................................................ 3

2 The Nice Classification ............................................................................. 3

3 Administrative Tools for Classification Purposes.................................. 4

4 Building a List of Goods and Services .................................................... 5 4.1 Clarity and precision ..................................................................................5

4.1.1 General principles........................................................................................... 5 4.1.2 Use of expressions (e.g. ‘namely’, ‘in particular’) to determine the scope

of the list of goods/services ............................................................................ 5 4.1.3 Use of the term ‘and/or’ .................................................................................. 6 4.1.4 Punctuation..................................................................................................... 6 4.1.5 Inclusion of abbreviations and acronyms in lists of goods and services ........ 7

4.2 Terms and expressions lacking clarity and precision .............................8 4.2.1 General indications of the class headings of the Nice Classification which

are deemed not to be sufficiently clear and precise ....................................... 8 4.2.2 Vague terms ................................................................................................. 11 4.2.3 The claim for all goods/services in this class or all goods/services of the

alphabetical list in this class ......................................................................... 12 4.2.4 Reference to other classes within the list ..................................................... 12 4.2.5 Trade marks in a list of goods/services ........................................................ 12 4.2.6 Inclusion of the terms parts and fittings; components and accessories in

lists of goods and services ........................................................................... 13 4.2.7 Use of indefinite qualifiers ............................................................................ 13

5 Procedure of Examination ...................................................................... 13 5.1 Parallel applications.................................................................................13 5.2 Objections.................................................................................................13 5.3 Amendments.............................................................................................14 5.4 Addition of classes...................................................................................16

6 Annex 1..................................................................................................... 17

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1 Introduction

Every CTM application must contain a list of goods and services as a condition for a filing date to be accorded (Article 26(1)(c) CTMR). The list must be classified in accordance with the Nice Agreement (Article 28 CTMR and Rule 2(1) CTMIR).

The list must be worded in such a way as to (a) indicate clearly the nature of the goods and services, and ( b) allow each item to be classified in only one c lass of the Nice Classification (Rule 2(2) CTMIR).

The use of the Office’s administrative IT tools for classification (see paragraph 3) is highly recommended. Any part of the list of goods and services which does not match the data from the tools will be examined following the principles as set out in these Guidelines. Whenever the applicant selects a term from the available tools, it will not be examined any further and will speed up the registration procedure.

The goods and services covered by a CTM application – including general indications of the class headings – will be interpreted by the Office on the basis of their natural and usual meaning. The former practice of the Office, according to which the use of all the general indications listed in the class heading of a particular class constituted a claim to all goods or services falling under the class was abandoned in June 2012, following the judgment of 19/06/2012, C-307/10, ‘IP Translator’.

The purpose of this part of the Guidelines is to describe Office practice in the examination of classification of goods and services.

The first part (paragraphs 1 to 4) sets out the principles applied by the Office. The second part (paragraph 5) summarises the procedure of examining the list of goods and services.

In short, when examining the classification of a list of goods and services the Office does four tasks:

• it checks that each of the goods and services is clear and precise enough; • it checks that each term is proper to the class in which it is applied for; • it notifies any deficiency; • it refuses the application, in whole or in part, where the deficiency is not remedied

(Rule 9(4) and (8) CTMIR).

2 The Nice Classification

The version of the classification under the Nice Agreement in force at the filing date will be applied to the classification of the goods or services in an application (available at: http://tmclass.tmdn.org). Rule 2 requires the applicant to provide a list of goods and services in the following manner.

• The list must be worded in such a way as to indicate clearly the nature of the goods or services and to allow each item to be classified.

• The goods or services must be grouped according to the Nice Classification, each group preceded by the number of the class to which the goods or services belong and presented in the order of the classification.

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The Nice Classification consists, for each class, of the following:

1. Class headings: the class headings are general indications relating to the field to which, in principle, the goods or services belong;

2. Explanatory notes: the explanatory notes explain which goods or services are meant or not meant to fall under the class headings and are to be considered an integral part of the classification;

3. The alphabetical list: the alphabetical list shows how individual goods or services are appropriate to a class;

4. General remarks: the general remarks explain what criteria should be applied if a term cannot be classified in accordance with the class headings or alphabetical list.

More information regarding the Nice Classification can be found on the website of the World Intellectual Property Organization (WIPO) at https://www.wipo.int.

3 Administrative Tools for Classification Purposes

When filing an electronic application through e-filing, users can select pre-approved terms to build their list of goods & services. All those selectable terms originate from a harmonised database and will automatically be accepted for classification purposes. Using these pre-approved terms will facilitate a smoother trade mark registration process. The harmonised database brings together terms which are accepted for classification purposes in all EU offices.

Should the applicant use a list of goods & services containing terms that are not found in the harmonised database, the Office will verify through an examination procedure whether they can be accepted.

Before filing an application the content of the harmonised database can be searched through the Office’s tool TMclass (http://tmclass.tmdn.org/ec2/).This tool brings together classification databases of participating offices within and outside the EU and shows whether a term can be accepted by the office concerned. Within TMclass goods and services are grouped according to shared characteristics from a market perspective, starting from the more general and ending with the more specific. In this way, the user is provided with a simplified search, and is given a better overview of the content of each class, thus facilitating the selection of appropriate terms.

This grouping and ranking, also called Taxonomy, has no legal effect. In particular, the scope of protection of a Community trade mark is always defined by the natural and usual meaning of the chosen terms, not by the position of the terms in the Office’s classification tools.

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4 Building a List of Goods and Services

4.1 Clarity and precision

4.1.1 General principles

The goods and services for which the protection of the trade mark is sought should be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought (judgment of 19/06/2012, C-307/10, ‘IP Translator’, para. 49).

A description of goods and services is sufficiently clear and precise when its scope of protection can be under stood from its natural and us ual meaning. If this scope of protection cannot be understood, sufficient clarity and precision may be achieved by identifying factors such as characteristics, purpose and/or identifiable market sector. Elements that could help to identify the market sector1 may be, but are not limited to, the following:

• consumers and/or sales channels • skills and know-how to be used/produced • technical capabilities to be used/produced.

A term may be part of the description of goods and services in a number of classes; it may be clear and precise in a particular class without further specification. For example: furniture (Class 20), clothing (Class 25), gloves (Class 25).

If protection is sought for a specialised category of goods and services or a specialised market sector belonging to a di fferent class, further specification of the term may be necessary. For example: furniture especially made for medical purposes (Class 10), furniture especially made for laboratories (Class 9), protective clothing (Class 9) clothing especially for operating rooms (Class 10), clothing for pets (Class 18), gardening gloves (Class 21), baseball gloves (Class 28).

Tools such as TMclass (http://tmclass.tmdn.org/ec2/) are available to determine whether the particular category of goods and services needs this further specification or not.

4.1.2 Use of expressions (e.g. ‘namely’, ‘in particular’) to determine the scope of the list of goods/services

The use of the words ‘namely’ or ‘being’ is acceptable, but must be understood to be a restriction to the specific goods and services which are listed thereafter. For example, pharmaceutical preparations, namely analgesics in Class 5 means that the application only covers analgesics and not any other type of pharmaceuticals.

The expression ‘in particular’ can also be accepted as it serves to indicate an example of the goods and s ervices which are applied for. For example, pharmaceutical

1 Market sector describes a set of businesses that are buying and selling such similar goods and services that they are in direct competition with each other.

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preparations, in particular analgesics means that the application covers any kind of pharmaceuticals, with analgesics being an example.

The same interpretation applies to the use of the terms ‘including’, ‘including (but not limited to)’, ‘especially’ or ‘mainly’ as in the example pharmaceutical preparations, including analgesics.

A term that would normally be c onsidered unclear or imprecise can be m ade acceptable provided that it is further specified, e.g. by using ‘namely’ and a l ist of acceptable terms. An example would be electrical apparatus, namely computers for goods in Class 9.

Further examples of acceptable use

Class 29: Dairy products namely cheese and butter

This would restrict the goods to only cheese and butter and exclude all other dairy products.

Class 41: Provision of sports facilities, all being outdoors.

This would restrict the services to cover only outdoor facilities and exclude any indoor facilities.

Class 25: Clothing, all being underwear

This would restrict the goods covered to only that which is considered underwear and will exclude all other types of clothing.

Other words or phrases may only point out that certain goods are important, and the inclusion of the term does not restrict the further listing in any way. Examples include:

Class 29: Dairy products, in particular cheese and butter

The coverage would include all dairy products; cheese and butter are probably the TM owner’s most successful goods.

Class 41: Provision of sports facilities, for example outdoor running tracks.

The coverage now merely gives an example of one of several possibilities.

Class 25: Clothing, including underwear The coverage extends to all clothing and not just underwear.

4.1.3 Use of the term ‘and/or’

The use of oblique strokes is acceptable in lists of goods and s ervices; the most common use is in the phrase ‘and/or’, meaning that both goods/services referred to fall in the same class. For example:

• Chemical/biochemical products • Chemical and/or biochemical products • Chemicals for use in industry/science • Chemicals for use in industry and/or science • Import/export agency services.

4.1.4 Punctuation

The use of correct punctuation is very important in a list of goods and services, almost as important as the words.

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The use of commas serves to separate items within a similar category or expression. For example, flour and preparations made from cereals, bread, pastry and confectionery in Class 30 must be read as that the goods can be or are made from any of those materials.

The use of a semi-colon means a separation between expressions. For example, flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder in Class 30 must be interpreted that the terms honey and treacle are independent from the other terms and do not form part of preparations made from …

The separation of terms with incorrect punctuation can lead to changes in meaning and incorrect classification.

Take the example of computer software for use with textile machinery; agricultural machines in Class 9. In this list of goods and services the inclusion of a semi-colon means that the term agricultural machines must be c onsidered as an independent category of goods. However, these are proper to Class 7, regardless of whether the intention was to protect computer software to be used in the field of textile machinery and agricultural machines.

A further example would be retail services in relation to clothing; footwear; headgear in Class 35. The use of a semi-colon renders the terms footwear and headgear as goods, which are separate and not included in the retail services. In such cases, the terms should be separated by commas.

4.1.5 Inclusion of abbreviations and acronyms in lists of goods and services

Abbreviations within lists of goods and services should be accepted with caution. Trade marks could have an indefinite life, and the interpretation of an abbreviation could vary over time. However, provided that an abbreviation has only one meaning in relation to the class of goods or services applied for, it can be al lowed. The very well-known examples CD-ROMs and DVDs are acceptable in Class 9. If the abbreviation is well known in the field of activity it will be acceptable, but a more practical solution would be for examiners to initially carry out an internet search for the abbreviation to determine whether it needs to be expanded into words or the abbreviation or acronym followed by the abbreviation in square brackets (following WIPO’s example).

Example

Class 45 Services offering advice on the application and registration of CTMs.

This could be expanded to:

Class 45 Services offering advice on the application and registration of Community Trade Marks;

or

Class 45 Services offering advice on the application and registration of CTMs [Community Trade marks];

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Acronyms can be accepted in a list of goods or services as long as they are comprehensible and appropriate to the class applied for.

4.2 Terms and expressions lacking clarity and precision

4.2.1 General indications of the class headings of the Nice Classification which are deemed not to be sufficiently clear and precise

In collaboration with the Trade Mark Offices of the European Union, other (inter)national organisations, offices and various user associations, the Office has established a list of general indications of the class headings of the Nice Classification which are deemed not to be s ufficiently clear and precise in accordance with the judgment of 19/06/2012, C-307/10, ‘IP Translator’.

The 197 general indications of the Nice class headings were examined with respect to the requisites of clarity and precision. Of these, 11 were considered to lack the clarity and precision to specify the scope of protection that they would give, and consequently cannot be accepted without further specification. These are set out below in bold.

Class 6 Goods of common metal not included in other classes Class 7 Machines and machine tools Class 14 Precious metals and their alloys and goods in precious metals or coated

therewith, not included in other classes Class 16 Paper, cardboard and goods made from these materials [paper and

cardboard], not included in other classes Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these

materials [rubber, gutta-percha, gum, asbestos and m ica] and not included in other classes

Class 18 Leather and i mitations of leather, and goods made of these materials [leather and imitations of leather] and not included in other classes

Class 20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics

Class 37 Repair Class 37 Installation services Class 40 Treatment of materials Class 45 Personal and social services rendered by others to meet the needs of

individuals

The remaining 186 Nice class heading terms comply with the requisites of clarity and precision and are therefore acceptable for classification purposes.

The reasons why each of the 11 Nice class heading terms were not found clear and precise are described below.

Class 6 Goods of common metal not included in other classes In light of the need for clarity and precision, this term does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to

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be produced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.

Class 7 Machines and machine tools In light of the need for clarity and pr ecision, the term machines does not provide a c lear indication of what machines are covered. Machines can have different characteristics or different purposes, they may require very different levels of technical capabilities and k now-how to be pr oduced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.

Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes In light of the need for clarity and precision, the term goods in precious metals or coated therewith, not included in other classes does not provide a clear indication of what goods are covered, as it simply states what the goods are made of or coated with, and not what the goods are. It covers a wide range of goods that may have very different characteristics, that may require very different levels of technical capabilities and k now-how to be produced, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.

Class 16 Paper, cardboard and goods made from these materials, not included in other classes In light of the need for clarity and precision, the term goods made from these materials [paper and cardboard], not included in other classes does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be pr oduced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.

Class 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes In light of the need for clarity and precision, the term goods made from these materials [rubber, gutta-percha, gum, asbestos and mica] and not included in other classes does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be pr oduced and/or used, could target different consumers, be s old through different sales channels, and therefore relate to different market sectors.

Class 18 Leather and i mitations of leather, and goods made of these materials and not included in other classes In light of the need for clarity and precision, the term goods made of these materials [leather and imitations of leather] and not included in other classes does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics

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and/or purposes, that may require very different levels of technical capabilities and k now-how to be pr oduced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.

Class 20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics In light of the need for clarity and precision, this term does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be produced and/or used, that could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.

Class 37 Repair In light of the need for clarity and precision, this term does not provide a clear indication of the services being provided, as it simply states that these are repair services, and not what is to be repaired. As the goods to be repaired may have different characteristics, the repair services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors.

Class 37 Installation services In light of the need for clarity and precision, this term does not provide a clear indication of the services being provided, as it simply states that these are installation services, and not what is to be installed. As the goods to be installed may have different characteristics, the installation services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors.

Class 40 Treatment of materials In light of the need for clarity and precision, this term does not give a clear indication of the services being provided. The nature of the treatment is unclear, as are the materials to be t reated. These services cover a wide range of activities performed by different service providers on materials of different characteristics requiring very different levels of technical capabilities and know-how, and may relate to different market sectors.

Class 45 Personal and social services rendered by others to meet the needs of individuals In light of the need for clarity and precision, this term does not give a clear indication of the services being provided. These services cover a w ide range of activities performed by different service providers requiring very different levels of skill and k now-how, and m ay relate to different market sectors.

CTM applications including one of the abovementioned eleven general indications will be objected to as being too vague. The applicant will be asked to specify the vague term.

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The above non-acceptable general indications can become clear and precise if the applicant follows the principles set out before under paragraph 4.1 Principles of clarity and precision. The following is a non-exhaustive list of acceptable specifications.

Not a clear and precise term Example of a clear and precise term

Goods of common metal not included in other classes (Class 6)

Construction elements of metal (Class 6) Building materials of metal (Class 6)

Machines (Class 7) Agricultural machines (Class 7) Machines for processing plastics (Class 7) Milking machines (Class 7)

Goods in precious metals or coated therewith (Class 14) Works of art of precious metal (Class 14)

Goods made from paper and cardboard (Class 16) Filtering materials of paper (Class 16)

Goods made from rubber, gutta-percha, gum, asbestos and mica (Class 17) Rings of rubber (Class 17)

Goods made of these materials [leather and imitations of leather] (Class 18) Briefcases [leather goods] (Class 18)

Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics (Class 20)

Door fittings, made of plastics (Class 20) Figurines of wood (Class 20)

Repair (Class 37) Shoe repair (Class 37)Repair of computer hardware (Class 37)

Installation services (Class 37) Installation of doors and windows (Class 37)Installation of burglar alarms (Class 37)

Treatment of materials (Class 40) Treatment of toxic waste (Class 40)Air purification (Class 40)

Personal and social services rendered by others to meet the needs of individuals (Class 45)

Personal background investigations (Class 45) Personal shopping for others (Class 45) Adoption agency services (Class 45)

Note that vague terms would not be made specific, or acceptable, by the addition of such terms as including or in particular. The example machines, including milking machines would not be acceptable as it remains vague. (see paragraph 4.1.2)

4.2.2 Vague terms

The same principles regarding clarity and precision as described above are applicable to all the goods and services listed in the application. Terms which do not provide a clear indication of the goods covered, should be obj ected to. Examples of such expressions are:

• Electric/electronic apparatus/instruments • Association services • Facilities management services.

They all must be specified as described above, i.e. by identifying factors such as characteristics, purpose and/or identifiable market sector.

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4.2.3 The claim for all goods/services in this class or all goods/services of the alphabetical list in this class

If the applicant intends to protect all goods or services included in the alphabetical list of a particular class, it has to expressly indicate this by listing these goods or services explicitly and i ndividually. In order to assist applicants, the use of the hierarchical structure (see paragraph 3 Administrative tools for classification purposes) is encouraged.

Applications are sometimes submitted for all goods in Class X, all services in Class X, all goods/services in this class or all goods/services of the alphabetical list in this class (or the like). This specification does not comply with Article 26(1)(c) CTMR which requires a list of the goods or services in respect of which the registration is requested. Consequently, no filing date is awarded.

On other occasions the applicant has correctly listed some goods and/or services to be covered and added, at the end of the listing in each class, the expression and all other goods/services in this class or and all goods/services of the alphabetical list in this class (or the like). In those cases, the application may proceed only for the part of the goods and/or services that is correctly listed. The Office will inform the applicant that those statements are not acceptable for classification purposes and t hus will be deleted.

4.2.4 Reference to other classes within the list

References to other class numbers within a class are not acceptable for classification purposes. For example, the descriptions (in Class 39) transport services of all goods in Classes 32 and 33 or (in Class 9) computer software in the field of services in Classes 41 and 45 are not acceptable as in both cases the terms are considered to be unclear and i mprecise and l ack legal certainty as to what goods and s ervices are covered. The only way to overcome the objection to these lists of goods and services will be for the respective goods of Classes 32 and 33, and the services of Classes 41 and 45 to be specified.

The term …goods not included in other classes… is not acceptable in service classes because this expression only has a sense in its original goods class.

For example, the heading of Class 22 reads ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes). In that context the reference to … not included in other classes is meaningful. However, if that same term is used in a s ervice class list of goods and services it cannot make sense. For example, transport services of ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) in Class 39 could not be accepted. The mention of … (not included in other classes) must be deleted.

4.2.5 Trade marks in a list of goods/services

Trade marks cannot appear within a list of goods and services as if they were a generic term or a category of goods. In such cases, the Office will object to the inclusion of the term, and request its replacement by a generic term for the goods or services.

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Example

Class 9: Electronic devices for transmission of sound and images; video players; CD players; iPods.

Since iPod™ is a trade mark, the applicant will be requested to replace it by a synonym such as a small portable digital audio player for storing data in a variety of formats including MP3.

Other examples are Caterpillar™ (the correct classification would be crawler type vehicle), Discman™ (portable compact disc player), Band-Aid™ (sticking plasters), Blu Ray discs™ (optical storage discs) or Teflon™ (non-stick coating based on polytetrafluoroethylene). This list is not exhaustive and i n cases of doubt examiners should refer cases to a relevant expert within the Office.

4.2.6 Inclusion of the terms parts and fittings; components and accessories in lists of goods and services

The terms parts and fittings; components and accessories are, on t heir own or in combination with each other, neither clear nor precise enough for classification purposes. Each of the terms requires further qualification to become acceptable in its proper class. Such terms would become acceptable by identifying factors such as characteristics, purpose and/or identifiable market sector. For example:

• Parts and fittings for motor vehicles is acceptable in Class 12 • Building components made of wood is acceptable in Class 19 • Musical accessories is acceptable in Class 15.

4.2.7 Use of indefinite qualifiers

The use of qualifiers such as: ‘the like’; ‘ancillary’, ‘associated goods’; ‘and related goods’ and ‘etc.’ in a list of goods or services is unacceptable, since they do not comply with the requirements of clarity and precision (see paragraph 4.1).

5 Procedure of Examination

5.1 Parallel applications

While the Office will always strive for consistency, the fact that a list of goods and services has been previously accepted, but which is wrongly classified, does not have to lead to the acceptance of the same list in any subsequent applications.

5.2 Objections

Where the Office considers that there is a need to amend the list of goods and services it should, if possible, discuss the issue with the applicant. Whenever reasonably possible the examiner should offer a p roposal for a c orrect classification. If the applicant submits a l ong list of goods/services which is not grouped under class

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numbers or classified at all, then the examiner should simply object under Rule 2, and ask the applicant to provide the list in a form that complies.

The response from the applicant must, under no circumstances, extend the scope or range of goods or services (Article 43(2) CTMR).

Where the applicant has failed to identify any classes, or has incorrectly identified the class(es) for the goods or services, then any further explanation of the scope of the application may extend the number of classes required to accommodate the list of goods and services. It does not automatically follow that the list itself has been extended.

Example

An application covering beer, wine and tea in Class 33 should be corrected to:

Class 30: Tea.

Class 32: Beer.

Class 33: Wine.

Although there are now three classes covering the goods, the list of goods has not been extended.

When the applicant has correctly attributed a class number to a pa rticular term, this limits the goods to those falling under that class. For example, an application for tea in Class 30 may not be amended to medicinal tea in Class 5 as that would extend the goods beyond those applied for.

Where there is a need to amend the classification, the Office will send a reasoned communication pointing out the error(s) detected in relation to the list of goods and services. The applicant will be requested to amend and/or to specify the list and the Office may propose the way in which the items should be classified.

The original time limit allowed to submit observations on the classification deficiency letter can only be extended once. No further extensions will be granted unless exceptional circumstances apply.

The Office will send a l etter informing the applicant of the definitive agreed list of accepted terms.

5.3 Amendments

See also the Guidelines, Part E, Register Operations, Section 1, Changes in a Registration.

Article 43(1) and (2) CTMR allows for the amendment of an application. This includes the amendment of the list of goods and services provided that ‘such a correction does not substantially change the trade mark or extend the list of goods and services’.

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The amendment can be listed in either positive or negative terms, the following examples are both acceptable:

• Alcoholic beverages all being whisky and gin. • Alcoholic beverages none being whisky or gin.

Since an amendment cannot extend the list of goods and services, it must be in the nature of a r estriction or deletion of some of the terms originally contained in the application. Once such amendments (deletions) have been received (and later accepted) by the Office, the deleted terms cannot be re-introduced, nor can the remaining list of goods and services be extended.

A restriction should respect certain criteria:

1. The applicant cannot exclude goods and services that are not covered in the application and/or not covered by the relevant class.

For example the following would not be acceptable:

Class 32: Syrups (original application) to syrups with the exception of fruit juices.

Class 3: Cosmetics with the exception of disinfecting substances (Class 5).

2. The restriction must be comprehensible and give a sufficiently clear and precise (see also paragraph 4.2) indication of the goods or services to be excluded in the list or a s ufficiently clear and p recise indication of those goods and services which remain after the restriction.

For example the following would not be acceptable:

Class 16: Typewriters, only related to financial services.

3. The restriction must not contain references to trade marks.

For example the following would not be acceptable:

Class 9: Apparatus for the reproduction of sound, namely iPods.

4. The restriction must not contain a territorial limitation which contradicts the unitary nature of the CTM.

For example the following would not be acceptable:

Class 7: Washing machines, only for sale in France.

A restriction may result in a l onger list of goods and s ervices than that filed. For example, the original list of goods and s ervices may have been f iled as alcoholic beverages, but it could be restricted to alcoholic beverages being wines and spirits, but not including whisky or gin and not including liqueurs, cocktails or combinations of beverages containing elements of whisky or gin.

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5.4 Addition of classes

Under the provisions of Article 43(2) CMTR (listed above), it is possible to add a c lass or classes to an application, but only where the goods or services detailed in the original application were clearly included in the wrong class or when a good or service has been clarified and needs to be classified in new class(es).

For example, assume the original list of goods reads:

Class 33: Alcoholic beverages including beer, wines and spirits.

Since beer is proper to Class 32, the applicant will be requested to transfer the term to Class 32, even if Class 32 was not listed in the original application. If the applicant agrees then the application will cover goods in Classes 32 and 33.

When classes are added, additional fees may be payable and the applicant must be informed accordingly.

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6 Annex 1

Table of Contents

Introduction...............................................................................................................19 Advertising services.................................................................................................19 Air freshening and perfuming preparations............................................................19 Amusement apparatus and electronic games ........................................................19 Association services or services provided by an association to its members .... 20 Beauty apparatus......................................................................................................20 Bringing together of services ..................................................................................20 Broadcasting and/or transmission services...........................................................20 Brokerage services...................................................................................................21 Cases (and carrying bags) .......................................................................................21 Charitable services...................................................................................................21 Collection and storage services ..............................................................................22 Computer games and computer games apparatus ................................................22 Curtains and blinds ..................................................................................................23 Custom manufacture/manufacturing for third parties............................................23 Data services.............................................................................................................23 Design services ........................................................................................................24 Digital imaging services...........................................................................................24 Downloadable goods................................................................................................24 Electricity and energy...............................................................................................24 Electronic and electric apparatus............................................................................25 Electronic cigarettes.................................................................................................25 Franchising ...............................................................................................................25 GPS systems – location, tracking and navigating..................................................26 Hair styling ................................................................................................................27 Hire services .............................................................................................................27 Humanitarian aid services........................................................................................27 Internet services, on-line services...........................................................................27 Kits and sets .............................................................................................................28 Leasing......................................................................................................................29 Mail order ..................................................................................................................29 Manuals (for computers, etc.) ..................................................................................29 Manufacturing services............................................................................................30 News services...........................................................................................................30 On-line services ........................................................................................................30 Ordering of services.................................................................................................30 Perfuming and air freshening preparations............................................................31

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Personal and soc ial services rendered by others to meet the needs of individuals.................................................................................................................31 Precious metal goods...............................................................................................31 Protective clothing....................................................................................................32 Rental services .........................................................................................................32 Retail and wholesale services .................................................................................33 Satellite tracking .......................................................................................................35 Sets............................................................................................................................35 Social networking services......................................................................................35 Software publishing..................................................................................................35 Solar power ...............................................................................................................35 Storage services .......................................................................................................36 Supply of ... ...............................................................................................................36 Systems.....................................................................................................................36 Tickets (for travel, entertainment etc.) ....................................................................36 Video games .............................................................................................................37 Virtual environment ..................................................................................................37

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Introduction

When classifying the general principles of the Nice Classification must be applied.

The purpose of this Annex is to clarify the classification of certain problematic terms. It also provides notes on classification practice (including words or phrases that should not be used).

The Office’s classification database TMclass is available at http://tmclass.tmdn.org

Advertising services

In principle, advertising services belong to Class 35. The main entries on advertising services in the list of services in the Nice Classification are:

• Advertising • Radio advertising • Radio commercials • Television advertising • Television commercials • Layout services for advertising purposes • Publication of publicity texts • Production of advertising films.

These entries cover the design of advertising material and production of commercials, as they are services which will be provided by advertising agencies.

Air freshening and perfuming preparations

See perfuming and air freshening preparations.

Amusement apparatus and electronic games

Following changes to the Nice Classification on 1 January 2012 ( 10th edition), all games (whether electronic or not) are classified in Class 28.

These are shown in the alphabetical list as follows:

• Games (Apparatus for-) • Video game machines • Arcade video game machines.

Most of these Class 28 devices come loaded with the games. However, if these games are not loaded on t he devices, they will be r ecorded on dat a carriers or they will be downloadable. In these cases, the games are considered to be game programmes which are especially adapted for use with gaming devices and thus will be classified in Class 9.

See also computer games.

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Association services or services provided by an association to its members

These, and similar terms are too vague to be acceptable. The type, or scope, of the service being provided needs to be mentioned. Examples of acceptable specifications are:

Class 35: Association services in the nature of business administration services.

Class 45: Services provided by an association to its members in the form of legal services.

See also charitable services.

Beauty apparatus

Class 7: Sprayers (machines) for applying artificial sun tanning preparations.

Class 8: Hand-operated instruments/tools for beauty purposes Tattooing needles/apparatus Depilatory apparatus (electric and non-electric).

Class 10: Massage apparatus Microdermabrasion apparatus Apparatus for the treatment of cellulite Lasers for cosmetic beauty treatments Laser hair removal apparatus Photoepilation apparatus.

Photoepilation is a procedure carried out by pulsed light devices. These devices use the same principle as lasers (i.e. heating up the hair follicle), yet they are not lasers.

Class 11: Ultra-violet ray lamps for cosmetic purposes Sun beds Steam apparatus for cleaning the skin.

Class 21: Cosmetic brushes and applicators.

Bringing together of services

See ordering of services and retail and wholesale services.

Broadcasting and/or transmission services

These services are proper to Class 38; both mean the same thing. The services provided in this area only cover the provision of the means of communication (e.g. the provision of a network of fibre optic cables; the provision of broadcasts or

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transmissions via geo-stationary satellite transmission facilities, the rental of communications apparatus and systems). Class 38 does not cover any programmes, advertising, information or advice which may be t ransmitted by means of telecommunications or broadcasting technology. Those services would remain in the appropriate classes.

Brokerage services

These are services provided by an individual or company whereby they buy and sell commodities for a fee or commission. The fee may be c harged to the buyer or the seller of the commodity (or both). The broker may never see the goods or services in question.

There are three listed classes for brokerage services. These are:

Class 35: Brokerage of name and address based lists.

Class 36: [A large number of listings for] brokerage of futures, carbon offsets, real estate, bonds, securities and other financial based items.

Class 39: Brokerage services relating to distribution, transport, and storage.

Cases (and carrying bags)

Cases (and bags) adapted to carry or transport the product they are intended to contain are in principle, classified in the same class as the product they are adapted to carry. For instance laptops bags are proper to Class 9.

All non-adapted carrying bags are in Class 18.

Charitable services

This term is too vague to be accepted in any class without further qualification.

Charitable services are defined by the service which is being offered. Therefore, they can be c lassified in any of the service classes, given the correct definition. For example:

Class 35: Charitable services, namely administration and general office work.

Class 36: The organisation of charitable collections; charitable fund raising.

Class 38: Telecommunications services for charitable purposes.

Class 39: Charitable services, namely ambulance transport.

Class 40: Charitable services, namely water treatment services.

Class 41: Charitable services, namely education and training.

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Class 42: Charitable services, namely environmental protection services.

Class 43: Charitable services, namely providing food and drink and temporary accommodation.

Class 44: Charitable services, namely providing medical services.

Class 45: Charitable services, namely mentoring [personal or spiritual].

Collection and storage services

In the case of physical goods, both collection and storage services would be proper to Class 39. This class includes transport and warehousing in its listings. This would also include the collection and physical storage of data, whether in written form or recorded on media (the Nice Classification has physical storage of electronically stored data or documents in Class 39).

Office services of electronically collecting, collating and m anipulating data are all proper to Class 35.

Storage of digital data and electronic data storage are seen to be i n analogy with hosting services, and so are proper to Class 42. Cloud computing data storage services are also proper to Class 42.

Computer games and computer games apparatus

The terms computer games and video games are highly similar and are treated as the same way.

The dictionary reference for computer games is as follows:

1 (Noun) ‘any of various games, recorded on cassette or disc for use in a home computer, that are played by manipulating a mouse, joystick, or the keys on the keyboard of a c omputer in response to the graphics on t he screen’ (Collins English Dictionary).

The terms computer games / video games, as such, are therefore only acceptable in Class 9. The dictionary reference of the term clearly states that it must be a game, thus software. The terms can therefore be accepted in Class 9 without any further clarification.

Games which are acceptable in Class 28 come loaded with the games software. For example, the following terms can all be accepted in Class 28:

• Arcade games • Arcade video machines • Computer game consoles • Games (apparatus for) • Hand held computer game devices • Video game machines.

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Curtains and blinds

Blinds, in all their forms, can be used on windows both internally and externally. The classification of these goods depends upon the purpose of the product and its material composition.

Curtains are normally found in use indoors and they are similarly classified according to their material composition.

Examples of acceptable entries are:

Class 6: Outdoor blinds of metal External metal blinds as part of a building for security purposes.

Class 17: Curtains of asbestos (safety-) (The material and purpose determine the classification).

Class 19: Blinds [outdoor] not of metal and not of textile. (These goods are probably made of wood).

Class 20: Blinds (slatted indoor) Venetian and vertical window blinds. Indoor window blinds Blinds (indoor window) [shades] [furniture] Curtains (bamboo-) Paper blinds Curtains (bead-)[for decoration].

Class 24: Outdoor blinds of textile.

The vast majority of curtains will fall under Class 24 since most domestic curtains (sometimes referred to as ‘drapes’) are made of textiles or plastic.

Care should be t aken with any references to curtain walling, or curtain walls. These refer to a type of construction technique relating to buildings and the associated goods are building materials and are proper to Class 6 (for metal goods) or Class 19 (for non- metallic goods).

Custom manufacture/manufacturing for third parties

See manufacturing services.

Data services

The term cannot be accepted on its own. It must be qualified.

The provision of data can be proper to several classes depending on the way in which the data is provided or the nature of the data being provided. In each case the exact nature of the service being offered will need to be stated, the provision of data is not

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enough. The following are examples of acceptable terms and their relevant classification:

Class 44: Provision of data (information) relating to the use of pharmaceuticals. (This would refer to the systemised provision of data which could only be interpreted by someone with specialised medical training.)

Class 45: Provision and interpretation of data relating to animal tracking. (This would refer to services in relation to the relocation of a lost or stolen animal. If the data were for other purposes, then the classification would be proper to other classes e.g. Class 42 for measuring or scientific reasons.)

Design services

Design services are, as such, proper to Class 42.

Design of advertising and design of brand names are both proper to Class 35 as these are both part of advertising services.

Likewise landscape design, floral design, turf design and planning [design] of gardens are proper to Class 44 as these are horticultural services.

Digital imaging services

The term digital imaging services has been deleted from Class 41 in the 10th edition of the Nice Classification. Consequently, the term cannot be accepted in Class 41 without any specification. This is because digital imaging can be c lassified in more than one class depending on the field the service refers to, e.g. medical, information technology or photography.

Acceptable terms include:

• Digital imaging (photo editing) in Class 41 • Medical imaging services in Class 44 • Digital imaging (IT services) in Class 42.

Downloadable goods

All material which is downloadable is proper to Class 9. This includes publications, music, ring tones, pictures, photographs, films or film extracts. The result of the download is that the material is captured onto the drives or memory of a c omputer, telephone or PDA where it operates independently of the source from whence it came. These can also be called virtual goods. All these downloadable goods can be retailed.

Electricity and energy

The following is a guide to some of the goods and services which surround electricity.

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Class 4: Electrical energy.

Class 7: Electrical generators.

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating, or controlling electricity Solar cells for electricity generation Photovoltaic cells and modules.

Class 36: Brokerage of electricity (see also note under brokerage services).

Class 39: Distribution of electricity Storage of electricity.

Class 40: Generation of electricity.

See solar power.

Electronic and electric apparatus

The term electronic and electric apparatus/devices/instruments is too vague for classification purposes; it is not acceptable in any goods class, and should be specified.

Please be aw are that specifications of electronic and electric apparatus / devices / instruments such as listed below are considered too vague as well:

• for controlling the environment • for household purposes • for use in hairdresser salons.

Electronic cigarettes

Electronic cigarettes, e-cigarettes or e-cigs are – for classification purposes – acceptable only in Class 34, even if they would serve a m edical purpose. Non- electronic parts of these types of cigarettes, like cartridges, atomisers or (aroma) substances for these cigarettes are also classified in Class 34.

The electronic parts like batteries and a microcomputer controlled circuits for electronic cigarettes are not acceptable in these classes and belong – as usual – to Class 9.

Franchising

The verb ‘franchise’ refers to the giving or selling of a franchise to another party. As a noun ‘franchise’ means ‘the authorisation granted to an i ndividual or group by a company to sell its products or services in a particular area’ (Oxford English Dictionary).

Without any further specification, the office will not accept the term franchise service or franchising services in Class 35. In order to be acceptable a clarification is required.

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For example:

Class 35: Business advice relating to franchising.

Class 36: Financing services relating to franchising.

Class 45: Legal services relating to franchising.

GPS systems – location, tracking and navigating

GPS and s atellite navigation systems (Class 9) provide location, tracking and navigating services, to provide the user with information.

The easiest way to classify these services is to divide them into those services which provide the telecommunications which run the services (Class 38) and those services which provide information via the GPS device. The range of information provided goes beyond mere travel route information (Class 39). It can include information regarding restaurants and accommodation (Class 43), information regarding shopping outlets (Class 35) or telephone numbers (Class 38).

The use of GPS devices in relation to the movement of vehicles and people can also lead to classifications over a range of classes. Route planning services (Class 39) have already been m entioned. This classification would also extend to logistic or freight moving companies keeping track of their vehicles using the same devices.

GPS systems can also be used in conjunction with other technology, to locate the source of a mobile telephone signal. If this is being done as part of a telecommunication service it will be proper to Class 38. If, however, it is being done as part of a criminal investigation service it would be proper to Class 45.

There are other services that can be as sociated with the services listed above. For example, the creation of maps for GPS systems is proper to Class 42. The downloadable applications which run the service or provide alternative ‘voices’ are proper to Class 9. The retail services for providing the downloadable applications are proper to Class 35.

The examples below demonstrate how these and other terms are classified.

Class 35: Compilation and provision of commercial directory information regarding service providers for GPS navigation.

Class 38: Satellite transmissions Providing public subscribers directory information for GPS navigation Providing access to general information supplied via satellite transmission Telecommunications services for location and tracking of persons and objects Tracking of mobile telephone via satellite signals Location of mobile telephones via satellite signals Providing access to GPS navigation services via satellite transmission Satellite transmission of navigation data.

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Class 39: Providing GPS navigation services Providing traffic information services via satellite transmission Providing road information services via satellite transmission Location services for logistics purposes of vehicles and goods Tracking services for logistics purposes of vehicles and goods.

Class 42: Providing weather information via satellite transmission Creation of GPS maps.

Class 45: Providing public amenity and civic directory information for GPS navigation Tracing and locating of missing persons via satellite transmission Tracking of persons carrying electronic tagging devices Security tracking services of vehicles Security location services of vehicles.

Hair styling

Most electric and non-electric hair styling apparatus is classified in Class 8 (e.g. electric hair curling irons; hair tongs [non-electric hand implements]; crimping irons for the hair etc.). Except:

Class 26: Electric hair curlers/rollers (e.g. CARMEN™ CURLERS).

Class 26: Hair curlers/rollers, other than hand implements.

Class 11: Hair dryers.

Class 21: Combs and brushes (non-electric and electric).

Hire services

See rental services.

Humanitarian aid services

Office practice on humanitarian aid services is the same as that on charitable services; the nature of the services must be specified (see charitable services).

Internet services, on-line services

The term internet services is neither clear nor precise for acceptance in any class. It must be further defined.

There are a range of services, offered by individuals and business to other individuals and businesses, which relate to the setting up, operation and servicing of internet web- sites and these are covered by appropriate entries in a number of classes.

There is an even wider range of services offered to customers through the medium of telecommunications including via the internet. It is possible to shop over the internet,

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obtain banking advice, learn a new language, or listen to a ‘local’ radio station which is situated on the other side of the world.

The application of the Nice Classification system generally applies regardless of whether the service is provided face-to-face, in dedicated premises, over a telephone, on-line from a database or from an internet web site.

Acceptable terms include:

Class 35: Advertising services provided over the internet.

Class 36: On-line banking services.

Class 38: Internet provider services.

Class 41: On-line gaming services.

Class 42: Providing on-line support services for computer program users.

Class 45: On-line social networking services.

Kits and sets

It is common in trade for certain goods to be sold in groups of more than one item. If the items are all the same, e.g. a pack of three toothbrushes, then the classification is simple. However, sometimes the collection of goods could be c omponent parts of another item, or have a function which is not defined by the individual goods. These groups of goods sometimes have collective names such as kit or set. These small words can have a big impact on (1) the acceptability as collection of goods and (2) the appropriate classification.

A kit can mean either:

1. a set of parts ready to be made into something (for example: a kit for a model plane) or

2. a set of tools or equipment that is to be used for a particular purpose (for example: a first-aid kit).

A set is a number of articles that are thought of as a group. This may have a def ined number or not (e.g. a set of keys, a set of saucepans, a set of golf clubs; a cutlery set).

Kits appear in the Nice Classification, for example, as in the following example:

Class 3: Cosmetic kits.

Class 5: First aid kits (seen as a collection of plasters and treatments).

It sometimes happens that the individual goods which make up t he kit or set would normally be c lassified in more than one class. However, the Office will not object to acceptance of such collective terms, provided that they make sense and/or are in common usage.

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When determining the correct classification for a kit or set, it is necessary to understand either; what the kit is going to be used for, or alternatively, if it going to make or construct something from its components, what the finished article will be.

Examples of acceptable terms would be:

Class 8: Manicure and pedicure sets.

Class 9: Hands free kits for phones.

Class 12: Tyre repair kits (for repairing a vehicle part that is in Class 12).

Class 27: Rug making kit.

Class 28: Scale model kits [toys] Toy model kits.

Class 32: Beer making kits.

Class 33: Wine making kits.

Leasing

The general remarks in the Nice Classification (10th edition) say, ‘Leasing services are analogous to rental services and therefore should be classified in the same way. However, hire- or lease-purchase financing is classified in Class 36 as a f inancial service.’

See also rental services.

Mail order

See retail and wholesale services.

Manuals (for computers, etc.)

Electronic items such as computers, printers, photocopiers and other electronic items are often delivered as new goods to the customer with a list of operating instructions. The instructions can be in paper (printed) format, or in an electronic format, such as a recording on a disc, or as a downloadable or non-downloadable document available at the manufacturer’s web-site.

Examples of this would be:

Class 9: Computer software and hardware and associated manuals in electronic format sold as unit therewith.

Class 16: Manuals sold as a unit with computer software and hardware.

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Manufacturing services

Manufacturing is only seen as a service when it is undertaken for third parties and must be specified as such. Custom manufacturing of certain single, ‘one-off’ products for third parties, for example a sailing boat or a sports car, by a specialist in that field would be proper to Class 40. Custom construction of e.g. made-to-measure kitchen units would be included in Class 40, but their installation would be proper to Class 37.

News services

News agency services are proper to Class 38. They are essentially a hub or collection point through which journalists and others can file and obtain newsworthy materials (in the form of stories, script or photographs). They do not perform any other function such as editing or verification services.

News reporting services are proper to Class 41. News has no boundaries, the subject could be anything.

Other examples include:

Class 38: News broadcasting services.

Class 40: Printing of newspapers.

Class 41: Presentation of news (programmes) Publication of news Editing of news.

As far as electronic news publications are concerned, downloadable news pod casts, news clips, news items, news publications, etc. are all goods which are proper to Class 9.

On-line services

See internet services.

Ordering of services

The ordering of goods/services for others can be accepted in Class 35 as a business service / office function. There are individuals and companies who offer services of providing solutions to a variety of problems on behalf of others, e.g. if you need a leaking tap to be fixed, the intermediary (service provider) will arrange the services of a plumber for you. This classification is in analogy with the Nice Classification entry procurement of services for others [purchasing goods and services for other business].

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Perfuming and air freshening preparations

There are preparations which serve to merely mask unpleasant smells (perfume) and there are also preparations which chemically ‘wrap-up’ and remove unpleasant odours (deodorisers) and their apparatus. They are properly classified as follows:

Class 3: Air fragrancing preparations Incense Potpourris [fragrances] Sachets for perfuming linen Scented wood Fumigation preparations [perfumes] Room sprays.

Class 5: Air deodorising preparations Air purifying preparations

Class 11: Air deodorising apparatus

Other goods which may release pleasant odours include perfumed candles which are proper to Class 4 (the release of perfume is a secondary characteristic) and perfumed drawer liners (proper to Class 16 as being analogous to packaging material and usually made of paper).

Personal and social services rendered by others to meet the needs of individuals

The general indication personal and social services rendered by others to meet the needs of individuals is not clear and precise enough and will not be accepted by the Office (see also paragraph 4.2).

The wording needs to be specified by the applicant.

There are many personal and s ocial services that are classifiable, but are proper to classes other than Class 45. These include:

Class 36: Personal insurance services (such as life assurance).

Class 41: Personal tuition.

Class 44: Personal medical services.

Class 45: Personal body guarding Consultancy services relating to personal appearance Personal tour guide services Personal shopping services.

Precious metal goods

The general indication goods of precious metals or coated therewith, not included in other classes in Class 14 is not clear and precise enough and will not be accepted by

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the Office (see also paragraph 4.2). The applicant needs to specify the wording of the term.

Caution needs to be applied when classifying goods made from precious metals.

Historically, virtually all goods which were made from, or coated with, precious metals were grouped together in Class 14. It was considered that the material had an influence on why the goods were bought, and that in turn determined where the goods were classified.

Since 1 January 2007, the classification of many goods that would have been in Class 14 has been re-classified. The reclassification of the goods is based upon their function, rather than the material from which they are made.

The following goods are examples of goods which are classified according to their function or purpose:

Class 8: Cutlery of precious metal.

Class 16: Pen nibs of gold.

Class 21: Teapots of precious metal

Class 34: Cigarette and cigar boxes made of precious metals.

Protective clothing

If items that are worn (or sometimes carried) have their primary function as the prevention of serious and/or permanent injury, or death or if that protection is offered against, for example contact with or exposure to extremes of temperature, chemicals, radiation, fire, or environmental or atmospheric hazards, then those goods would be proper to Class 9.

Examples of such protective goods would include hard-hats worn on building sites, and helmets worn by security guards, horse riders, motorcyclists, and American football players. Bullet-proof vests, metal toe-capped shoes, fireproof jackets and metal butchers’ gloves are examples of these: they are not clothing as such. Aprons, smocks and overalls which merely protect against stains and dirt are not proper to Class 9 but to Class 25 as general clothing. Protective sporting articles (except helmets) are proper to Class 28: none of these protect against loss of life or limb.

Rental services

Rental or hire services are classified, in principle, in the same class as the services provided. For example, the rental of cars falls in Class 39 (transport), rental of telephones in Class 38 (telecommunications), rental of vending machines in Class 35 (retail services). The same principle applies to leasing services which are found on TMclass in all of the service classes.

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Retail and wholesale services

A retail service is defined as ‘The action or business of selling goods in relatively small quantities for use or consumption’ (Oxford English Dictionary); this defines the scope of the services covered by this term.

There is an indication in the explanatory note to the listing of Class 35 in the Nice Classification that the term the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase these goods is acceptable in Class 35. Retail services are classified in analogy to this entry.

However, as regards retail services or similar services in Class 35 relating to the sale of goods, such as wholesale services, mail order services and e-commerce services, the Office applies judgment of 07/07/2005, C-418/02, ‘Praktiker’: the term retail services is only acceptable where the type of goods or services to be sold or brought together for the benefit of others, is indicated with sufficient clarity and precision (see paragraph 4.1). The term retail services of a supermarket and, by extension, retail services of a department store and similar terms are not acceptable as the goods to be sold are not defined.

The 10th edition of the Nice Classification (version 2013) includes retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies, which shows how terms can be expressed.

Examples of categories of goods which do not fulfil the requirements of clarity and precision:

• Merchandising articles • Fair-trade goods • Lifestyle accessories • Gift articles • Souvenirs • Collectors’ articles • Housewares.

Retail services for non-acceptable general indications of the class headings (see paragraph 3.4.2) are not acceptable. For example, the Office will not accept retail services for machines. However, retail services in relation to agricultural machines would be sufficiently precise and acceptable.

As regards ‘retail of services’, (i.e. services which consist of bringing together, for the benefit of others, of a variety of services, enabling consumers to conveniently compare and purchase those services), the Court has held that these must also be formulated with sufficient clarity and precision so as to allow the competent authorities and other economic operators to know which services the applicant intends to bring together (see judgment of 10/07/2014, C-420/13 ‘Netto Marken-Discount’).

This decision confirms that the ‘bringing together of services’ is an activity that is entitled to protection. The Court placed greater emphasis on the importance of defining the services being brought together, than on defining the action of ‘bringing together’ itself (thereby echoing its earlier judgment of 07/07/2005, C-418/02, ‘Praktiker).

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Terms expressing this should satisfy two requirements, firstly, using the familiar terms ‘bringing together, for the benefit of others... enabling customers to compare and purchase...’ in order to ‘frame’ the services being brought together and describe the actual retail activity itself, and secondly, in describing the services which are being brought together, employing terms which are understood and acceptable in their own right (e.g. legal services, broadcasting services, slimming club services etc.). In order to meet the fundamental requirements for clarity and pr ecision as confirmed by IP Translator, any claim to the retailing or ‘bringing together’ of services must be worded in this manner.

The following are example specifications which will now be deemed acceptable:

The bringing together, for the benefit of others, of a variety of legal services, enabling customers to conveniently compare and purchase those services.

The bringing together, for the benefit of others, of slimming club services, video- on-demand services, and detective agency services, enabling customers to conveniently compare and purchase those services.

The bringing together, for the benefit of others, of a variety of broadcasting services, enabling customers to conveniently compare and purchase those services.

In the case of the bringing together of services, wordings including ‘retail services connected with...’, ‘retail services connected with the sale of...’ and ‘electronic shopping retail services connected with...’ do not provide a clear distinction between the retailing of services and the provision of those services in their own right.

The following examples will therefore not be accepted and w ill be s ubject to an objection:

Retail services connected with takeaway services.

Retail services connected with the sale of legal services.

Mail order retail services connected with the sale of detective agency services.

The CJEU’s ruling is not to be interpreted as providing a means for obtaining duplicative protection of services intended to be provided in their own right (whether proper to Class 35 or elsewhere). Nor should it be perceived as an alternative means for providing protection for the advertising of one’s own services. Thus, if an application covers ‘the bringing together for the benefit of others of telecommunication services enabling customers to conveniently compare and purchase those services’, these services do not cover the actual provision of telecommunication services (which belongs to Class 38), but only the bringing together of a variety of telecommunication service providers enabling consumers to conveniently compare and purchase those services.

Finally, the specification of the goods or services by terms such as ‘including, in particular, for example, featuring, specifically, such as, is not precise enough since all these terms mean, in principle, ‘for example’. They do not restrict the goods or services which follow. Consequently, the abovementioned terms should be replaced by ‘namely or being’ as it will restrict the goods or services which follow those terms.

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Satellite tracking

See GPS systems – location, tracking and navigating.

Sets

See kits and sets.

Social networking services

Social networking services is an acceptable term in Class 45. It would be seen as a personal service which includes the identification and introduction of like-minded people for social purposes.

There are other aspects of the ‘social networking’ industry which could be proper to classes other than Class 45, for example:

Class 38: The operation of chat room services The provision of on-line forums.

Software publishing

Software publishing belongs to Class 41. A software publisher is a publishing company in the software industry between the developer and t he distributor. Publishing, according to its definition, includes newspaper publishing and software publishing.

Solar power

Solar power is energy that is derived from the sun and converted into heat or electricity.

Goods relating to the generation and s torage of electricity from solar energy are classified in Class 9.

Goods relating to the generation and storage of heat from solar energy are classified in Class 11.

Services relating to the generation of electricity from solar energy are classified in Class 40.

Class 9: Photovoltaic cells Solar panels, modules and cells.

Class 11: Solar collectors for heating.

Class 40: Production of energy.

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See electricity and energy.

Storage services

See collection and storage services.

Supply of ...

Care should be taken in the acceptance of this term when it is used to qualify services. It is acceptable in some circumstances, for example, supply of electricity in Class 39, where the term is often closely allied to distribution. It is also acceptable in the term catering services for the supply of meals (in Class 43) because the material being supplied, and the nature of the service, have both been given.

In the term supply of computer software (in Class 42) it is not clear what services are being provided. Whilst this class does include the services of design, rental, updating and maintaining computer software, it is not clear if any of those services are included in the general term supply. The word is often used as an apparent synonym for retail services but Class 42 does not include such services, they would be proper to Class 35.

Systems

This is another term which can be too unclear or too imprecise to be accepted.

It can be ac cepted only when qualified in a w ay that has a c lear and unam biguous meaning. For example, the following are acceptable:

Class 7: Exhaust systems.

Class 9: Telecommunication systems Computer systems Alarm systems.

Class 16: Filing systems.

Tickets (for travel, entertainment etc.)

A ticket is a ‘promise to supply’ in relation to a service, or a reservation service, the right to a service. Examples include:

Class 39: Issuing of airplane tickets.

Class 41: Ticket agency services (box office).

Note that tickets are not seen as goods retailed in Class 35.

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Video games

See computer games.

Virtual environment

The term providing a virtual environment is neither clear nor precise enough as it can relate to different areas of activities and classes. The term must be further defined.

Acceptable terms include:

Class 38: Providing a virtual chatroom Providing access to a virtual environment.

Class 42: Hosting of a virtual environment Maintenance of a virtual environment.

Absolute Grounds for Refusal

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART B

EXAMINATION

SECTION 4

ABSOLUTE GROUNDS FOR REFUSAL

Absolute Grounds for Refusal

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Table of Contents

2.7 Public policy or morality, Article 7(1)(f) CTMR .........................................4 2.7.1 ‘Public policy’ .................................................................................................. 4

2.7.1.1 Concept and categories...............................................................................4 2.7.1.2 Plant Variety Denominations .......................................................................5

2.7.2 Accepted principles of morality....................................................................... 7

2.8 Deceptiveness: Article 7(1)(g) CTMR.......................................................10 2.8.1 Examination of the deceptive character ....................................................... 10 2.8.2 Market reality and consumers’ habits and perceptions ................................ 12 2.8.3 Trade marks with geographical connotations relating to the location of the

applicant or the place of origin of the goods/services .................................. 13 2.8.4 Trade marks making reference to an ‘official’ approval, status or

recognition .................................................................................................... 13 2.8.5 Relation with other CTMR provisions ........................................................... 14

2.9 Protection of flags and other symbols – Articles 7(1)(h) and (i) CTMR.16 2.9.1 Protection of armorial bearings, flags, other state emblems, official signs

and hallmarks indicating control and warranty under Article 7(1)(h) CTMR – Article 6ter(1)(a) and (2) PC ...................................................................... 16 2.9.1.1 Examination of marks consisting of or containing a state flag ...................20 2.9.1.2 Examination of marks consisting of or containing armorial bearings and

other state emblems..................................................................................24 2.9.1.3 Examination of marks consisting of or containing official signs and

hallmarks indicating control and warranty..................................................27 2.9.2 Protection of armorial bearings, flags, other emblems, abbreviations and

names of international intergovernmental organisations under Article 7(1)(h) CTMR – Article 6ter(1)(b) and (c) PC .................................... 27

2.9.3 Protection of badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention under Article 7(1)(i) CTMR.............. 34

2.10 Article 7(1)(j) CTMR...................................................................................40 2.10.1 Introduction ................................................................................................... 40 2.10.2 The application of Article 7(1)(j) CTMR ........................................................ 42

2.10.2.1 Relevant PDOs/PGIs.................................................................................42 2.10.2.2 Situations covered by Article 103 of Regulation (EU) No 1308/2013 and

Article 16 of Regulation (EC) No 110/2008................................................43 2.10.2.3 Relevant goods .........................................................................................51

2.10.3 PDOs/PGIs not protected under Regulations (EC) No 1308/2013 and No 110/2008 ................................................................................................. 53 2.10.3.1 PDOs/PGIs protected at national level in an EU Member State ................53 2.10.3.2 PDOs/PGIs from third countries ................................................................53

2.11 Article 7(1)(k) CTMR..................................................................................55 2.11.1 Introduction ................................................................................................... 55 2.11.2 The application of Article 7(1)(k) CTMR....................................................... 57

2.11.2.1 Relevant PDOs/PGIs.................................................................................57 2.11.2.2 Situations covered by Article 13(1) of Regulation (EU) No 1151/2012 ......58 2.11.2.3 Relevant goods .........................................................................................66

2.11.3 PDOs/PDIs not protected under Regulation (EU) No 1151/2012 ................ 69 2.11.3.1 PDOs/PDIs protected at national level in an EU Member State ................69 2.11.3.2 PDOs/PDIs from third countries ................................................................70

2.12 Community collective marks....................................................................72 2.12.1 Character of collective marks ....................................................................... 72

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2.12.2 Ownership..................................................................................................... 73 2.12.3 Particularities as regards absolute grounds for refusal ................................ 74

2.12.3.1 Descriptive signs .......................................................................................74 2.12.3.2 Misleading character as to its nature.........................................................75 2.12.3.3 Regulations of use contrary to public policy and morality..........................75

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2.7 Public policy or morality, Article 7(1)(f) CTMR

Article 7(1)(f) CTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. The rationale of Article 7(1)(f) CTMR is to preclude trade marks from registration where granting a monopoly would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society.

The Office considers that ‘public policy’ and ‘accepted principles of morality’ are two different concepts, which often overlap.

The question whether the goods or services applied for can be legally offered in a particular Member State’s market is irrelevant for the question whether the sign itself falls foul of Article 7(1)(f) CTMR (judgment of 13/09/2005, T-140/02, ‘Intertops’, para. 33). Whether or not a mark is contrary to public policy or accepted principles of morality must be determined by the intrinsic qualities of the mark applied for and not by the circumstances relating to the conduct of the person applying for the trade mark (judgment of 13/09/2005, T-140/02, ‘Intertops’, para. 28). In its judgment of 20/09/2011, T-232/10, ‘Soviet Coat of Arms’, the General Court held that the concepts of ‘public policy’ and ‘ acceptable principles of morality’ must be i nterpreted not only with reference to the circumstances common to all Member States but by taking into account ‘the particular circumstances of individual Member States which are likely to influence the perception of the relevant public within those States’ (para. 34).

The legislation and administrative practice of certain Member States can also be taken into account in this context (i.e. for assessing subjective values), not because of their normative value, but as evidence of facts which make it possible to assess the perception of the relevant public in those Member States (judgment of 20/09/2011, T-232/10, ‘Soviet Coat of Arms’, para. 57). In such a c ase, the illegality of the CTM applied for is not the determining factor for the application of Article 7(1)(f) CTMR but rather is of evidential value with regard to the perception of the relevant public in the Member State(s) in question.

Considering that the specific circumstances of individual Member States may not be widely known in the European territory, the objection letter should explain these circumstances clearly in order to make sure that the applicant is able to fully understand the reasoning behind the objection and is able to respond accordingly.

2.7.1 ‘Public policy’

2.7.1.1 Concept and categories

This objection derives from an assessment based on objective criteria. ‘Public policy’ refers to the body of Union law applicable in a certain area, as well as to the legal order and the state of law as defined by the Treaties and secondary EU legislation, which reflect a common understanding on certain basic principles and values, such as human rights. As indicated above, national legislation may also be t aken into account, not because of its normative value, but as evidence of facts which make it possible to assess the perception of the relevant public in those Member States.

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The following is a non-exhaustive list of examples of when signs will be caught by this prohibition.

1. On 27/12/2001 the Council of the European Union adopted Common Position 2001/931/CFSP on the application of specific measures to combat terrorism (OJ L 344, 28/12/2001, p. 93) later updated by Council Common Position 2009/64/CFSP (OJ L 23, 27/01/2009, p. 37 and av ailable online at: http://eur- lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:023:0025:0029:EN:PDF) which contains a list of individuals and groups facilitating, attempting to commit or committing terrorist acts in EU territory. Any CTM applied for which can be deemed to support or benefit an individual or a group on that list will be rejected as being against public policy.

2. Use of the symbols and names of Nazi organisations is prohibited in Germany (§ 86a dt. StGB (German Criminal Code), BGBl. Nr. I 75/1998) and in Austria (§ 1 öst. Abzeichengesetz (Austrian Law on I nsignias), BGBl. Nr. 84/1960 in conjunction with § 1 öst. Verbotsgesetz (Austrian Prohibition Law), BGBl. Nr. 25/1947). Any CTM applied for which uses such symbols or names will be rejected as being against public policy.

3. Bearing in mind that the notion of ‘public policy’ also covers specific EU legislation in force in a given field, and insofar as there is both an EU Regulation and an I nternational Convention that is binding on t he European Union preventing the granting of exclusive rights in the name of a pl ant variety registered in the European Union, it follows that it is contrary to European public policy to grant exclusive trade mark rights in the name of a plant variety registered in the European Union, which is, therefore, considered to be descriptive by law.

2.7.1.2 Plant Variety Denominations

Plant variety names describe cultivated varieties or subspecies of live plants or agricultural seeds. Council Regulation (EC) No 2100/94 on Community plant variety rights (CPVRR) establishes a s ystem of Community plant variety rights (CPVR) as the sole and exclusive form of Community industrial property rights for plant varieties. A variety denomination must ensure clear and unambiguous identification of the variety and fulfil several criteria (Article 63 CPVRR). The applicant for a CPVR must give a suitable variety denomination that shall be used by anyone who markets such variety in the territory of a member of the International Union for the Protection of New Varieties of Plants (UPOV), even after the termination of the breeder’s right (Article 17 CPVRR).

Since 2005, the European Union is party to the International Convention for the Protection of New Varieties of Plants (UPOV Convention), which has become an integral part of the Union’s legal order. Under Article 20(1) UPOV Convention, the variety shall be designated by a denomination which will be its generic designation. Furthermore, each Contracting Party shall ensure that no rights in the designation registered as the denomination of the variety shall hamper the free use of the denomination in connection with the variety, even after the termination of the breeder’s right.

Therefore, both the CPVRR and the UPOV Convention impose the obligation to use

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the variety denominations in order to commercialize protected varieties or varieties whose protection has ended.

The use of variety denominations allows the interested person to know the variety it is using or purchasing and possibly the breeder and the origin of the variety. The obligation to use the variety denominations contributes to the regulation of the market and to the safety of transactions in the agricultural and food sector, avoiding potential misleading of the public and counterfeiting. It is therefore a matter of public interest and public safety to use the adequate variety denomination in respect of a variety.

According to Article 18(2) CPVRR, a third party may hamper the free use of a variety denomination only if the rights in respect of a designation that is identical with the variety denomination were granted before that variety denomination was designated pursuant to Article 63 CPVRR.

A contrario, Article 18(2) CPVRR implies that no exclusive rights should be granted in respect of a des ignation that is identical with the variety denomination, after such variety denomination has been designated pursuant to Article 63 CPVRR.

OHIM therefore considers that registration of a CTM that would hamper the free use of a variety denomination after the grant of a CPVR to the corresponding variety is contrary to public policy.

As a c onsequence, CTM applications consisting of or containing signs which, if registered, would lead to an undue monopolisation of a variety denomination designating a variety protected by a CPVR or a variety that is no longer protected by a CPVR, shall be objected to on the grounds of being contrary to public policy under Article 7(1)(f) CTMR, in relation to Article 18(2) CPVRR, which provides for the free use by third parties of the denomination of a plant variety in connection with the variety itself (i.e. descriptive use).

The Community Plant Variety Office (CPVO), based in Angers (France), is the European Union’s agency responsible for implementing a system for the protection of plant variety rights.

The CPVO maintains a register of protected plant varieties. The protected varieties and the varieties whose CPVR was terminated can be searched, based on their variety denomination and/or other search criteria, through the CPVO Variety Finder1, available in the Office’s intranet, which should be consulted by examiners as a reference tool whenever the type of goods and/or services covered by the CTM application so dictate. In particular, whenever the specification of a CTM application refers to live plants, agricultural seeds, fresh fruits, fresh vegetables or equivalent wordings, the examiner must verify that the term or terms making up the trade mark do not coincide with a registered variety denomination or with the denomination of a variety for which protection has been surrendered, terminated or has expired. The examiner will check the CPVO database in order to ascertain whether the term or terms making up the CTM application coincide with a variety denomination already entered in the abovementioned CPVO register. The search should be confined to variety denominations registered for the European Union.

1 http://www.cpvo.europa.eu/main/en/home/databases/cpvo-variety-finder.

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If the check shows that the CTM applied for consists of or contains an identical reproduction of the variety denomination (be it in a word or in a figurative mark), the examiner must raise an objection under Article 7(1)(f) CTMR in respect of the relevant plant, seeds and fruits, as well as the dried, preserved and frozen fruits, since registration of a CTM consisting of a variety denomination entered in the abovementioned EU register is contrary to public policy. If, for example, a CTM applied for ‘flowers’ contains a VD for a kind of rose, the list of goods will have to be limited in order to exclude ‘roses’. Moreover, if more than one VD appear in a CTM applied for – say, a VD for ‘apples’ and another one for ‘strawberries’ −, the list of goods will have to be limited in order to exclude the goods covered by each VD, i.e., apples and strawberries.

Finally, where a plant variety denomination is used in the market but has not been registered or published in the CPVO, or in case of national VD, Articles 7(1)(c) and 7(1)(d) might be applicable (see paragraphs 2.3 and 2.4).

2.7.2 Accepted principles of morality

This objection concerns subjective values, but these must be applied as objectively as possible by the examiner. The provision excludes registration as Community trade marks of blasphemous, racist or discriminatory words or phrases, but only if that meaning is clearly conveyed by the mark applied for in an unambiguous manner; the standard to be applied is that of the reasonable consumer with average sensitivity and tolerance thresholds (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 21).

It is normally necessary to consider the goods and services for which registration of the mark is sought, since the relevant public may be di fferent for different goods and services and, therefore, may have different thresholds with regard to what is clearly unacceptably offensive. For example, as the Grand Board held in its decision of 06/07/2006, R 0495/2005-G – ‘SCREW YOU’, para. 29, ‘a person who is sufficiently interested in [sex toys] to notice the trade marks under which they are sold is unlikely to be offended by a t erm with crude sexual connotations.’ Nevertheless, although the Court has held that the goods and services applied for are important for identifying the relevant public whose perception needs to be examined, it has also made it clear that the relevant public is not necessarily only that which buys the goods and s ervices covered by the mark, since a br oader public than just the consumers targeted may encounter the mark (judgment of 05/10/2011, T-526/09, ‘Paki’, paras 17 and 18 respectively). Accordingly, the commercial context of a mark, in the sense of the public targeted by the goods and services, is not always the determining factor in whether that mark would breach accepted principles of morality (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 24). See also decision of 15/03/2013, R 2073/2012-4, − ‘CURVE’, paras 17-18 (T-266/13 – pending).

It is not only signs with ‘negative’ connotation that can be offensive. The banal use of some signs with a highly positive connotation can also be offensive (e.g. terms with a religious meaning or national symbols with a spiritual and political value, like ATATURK for the European general public of Turkish origin (decision of 17/09/2012, R 2613/2011-2 – ATATURK, para. 31)).

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There need not be illegality for this part of Article 7(1)(f) CTMR to be applied: there are words or signs that would not lead to proceedings before the relevant authorities and courts, but that are sufficiently offensive to the general public to not be registered as trade marks (decision of 01/09/2011, R 0168/2011-1 – ‘fucking freezing! by TÜRPITZ’, para. 16). Furthermore, there is an interest in ensuring that children and young people, even if they are not the relevant public of the goods and services in question, do not encounter offensive words in shops that are accessible to the general public. Dictionary definitions will in principle provide a pr eliminary indication as to whether the word in question carries an offensive meaning in the relevant language (decision of 01/09/2011, R 0168/2011-1 – ‘fucking freezing! by TÜRPITZ’, para. 25) but the key factor must be the perception of the relevant public in the specific context of how and where the goods or services will be encountered.

On the other hand, the Board of Appeal took the view that the word KURO did not convey to the Hungarian public the offensive meaning of the word ‘kúró’ (meaning ‘fucker’ in English), since the vowels ‘ó’ and ‘ú’ are separate letters which are distinct from ‘o’ and ‘ u’ and they are pronounced differently (decision of 22/12/2012, R 482/2012-1 – ‘kuro’, paras 12 et seq.).

There is a clear risk that the wording of Article 7(1)(f) CTMR could be applied subjectively so as to exclude trade marks that are not to the examiner’s personal taste. However, for the word(s) to be obj ectionable, it (they) must have a c learly offensive impact on people of normal sensitivity (judgment of 09/03/2012, T-417/10, ‘¡Que buenu ye! Hijoputa’, para. 21).

The concept of morality in Article 7(1)(f) CTMR is not concerned with bad taste or the protection of individuals’ feelings. In order to fall foul of Article 7(1)(f) CTMR, a t rade mark must be per ceived by the relevant public, or at least a s ignificant part of it, as going directly against the basic moral norms of the society.

There is no need to establish that the applicant wants to shock or insult the public concerned; the objective fact that the CTM applied for might be seen as such a shock or insult is sufficient (decision of 23/10/2009, R 1805/2007-1 – ‘Paki’, para. 27, confirmed by judgment of 05/10/2011, T-526/09, ‘Paki’ para. 20 et seq.).

Finally, application of Article 7(1)(f) CTMR is not limited by the principle of freedom of expression (Article 10 European Convention on Human Rights) since the refusal to register only means that the sign is not granted protection under trade mark law and does not stop the sign being used – even in business (judgment of 09/03/2012, T-417/10, ‘HIJOPUTA’, para. 26).

Examples of rejected CTMAs (public policy and/or morality)

Sign Relevant Consumer Public policy / morality Case No

BIN LADIN General consumer

Morality & public policy – the mark applied for will be understood by the general public as the name of the leader of the notorious terrorist organisation Al Qaeda; terrorist crimes are in breach of public order and moral principles (para. 17).

R 0176/2004-2

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Sign Relevant Consumer Public policy / morality Case No

CURVE 300 General consumer Morality – ‘CURVE’ is an offensive and vulgar word in Romanian (it means ‘whores’).

R 0288/2012-2

CURVE General consumer Morality – ‘CURVE’ is an offensive and vulgar word in Romanian (it means ‘whores’).

R 2073/2012-4 (T-266/13 –

pending)

General consumer Morality – ‘fucking’ is an offensive andvulgar word in English. R 0168/2011-1

General consumer Morality – ‘HIJOPUTA’ is an offensiveand vulgar word in Spanish. T-417/10

General consumer

Public policy – the Hungarian criminal code bans certain ‘symbols of despotism’, including the hammer and sickle as well as the 5-pointed red star symbolising the former USSR. This law is not applicable by reason of its normative value but rather as evidence of the perception of the relevant public (paras 59-63).

T-232/10

PAKI General consumer Morality– ‘PAKI’ is a racist insult inEnglish. T-526/09

SCREW YOU General consumer (for products other than sex products)

Morality – a substantial proportion of ordinary citizens in Britain and Ireland would find the words ‘SCREW YOU’ offensive and objectionable (para. 26).

R 0495/2005-G

FICKEN General consumer Morality - ‘FICKEN’ is an offensive and vulgar word in German (it means ‘fuck’).

T-52/13

ATATURK

Average consumer in the European general public of Turkish origin

Banal use of signs with a highly positive connotation can be offensive under Article 7(1)(f). ATATURK is a national symbol with a s piritual and political value for the European general public of Turkish origin.

R 2613/2011-2

Examples of accepted CTMAs

Sign Relevant Consumer Public policy / morality Case No

KURO General consumer

The fact that a foreign term, name or abbreviation displays certain similarities with an offensive word (like kúró) is not in itself sufficient reason to refuse the CTM applied for (para. 20). Hungarian vowels ‘ò’ and ‘ù’ are clearly different from ‘o’ and ‘u’ without accent. Furthermore, Hungarian words never end with ‘o’ without accent (paras 15- 18).

R 482/2012-1

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Sign Relevant Consumer Public policy / morality Case No

SCREW YOU General consumer(for sex products)

A person entering a sex shop is unlikely to be offended by a trade mark containing crude, sexually charged language (para. 26).

R 495/2005-G

DE PUTA MADRE General consumer

Although ‘puta’ means ‘whore’ in Spanish, the expression DE PUTA MADRE means ‘very good’ in Spanish (slang).

CTM 3 798 469 CTM 4 781 662 CTM 5 028 477

2.8 Deceptiveness: Article 7(1)(g) CTMR

2.8.1 Examination of the deceptive character

Article 7(1)(g) CTMR provides that marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services, shall not be registered.

According to the case-law relating to Article 3(1)(g) of the First Trademark Directive (TMD), the wording of which is identical to that of Article 7(1)(g) CTMR, the circumstances for refusing registration referred to in Article 7(1)(g) CTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see judgment of 30/05/2006, C-259/04, ‘Elizabeth Emanuel’, para. 47 and the case-law cited therein).

Pursuant to the above, the Office, as a matter of practice, makes the twin assumptions that:

1. There is no r eason to assume that a t rade mark is intentionally applied for to deceive customers. No deceptiveness objection should be r aised if a non- deceptive usage of the mark is possible vis-à-vis the goods and services specified: i.e. an assumption is made that non-deceptive use of the sign will be made if possible,

2. The average consumer is reasonably attentive and s hould not be regarded as particularly vulnerable to deception. An objection will generally only be raised where the mark leads to a clear expectation which is patently contradictory to, for instance, the nature or quality or geographical origin of the goods.

An objection should be raised when the list of goods/services is worded in such a way that a non-deceptive use of the trade mark is impossible.

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The following are two examples of marks which were found to be deceptive with regard to all or part of the claimed goods2.

Mark and goods Reasoning Case

LACTOFREE

for lactose in Class 5

The nature of the sign would immediately lead the relevant consumer to believe that the product in question, i.e. ‘lactose’, does not contain any lactose. It is clear that if the good being marketed under the sign ‘LACTOFREE’ is actually lactose itself, then the mark would be clearly misleading. NB: The mark is also objectionable under 7(1)(c)

R 892/2009-1

TITAN (German word for ‘titanium’)

for portable and relocatable buildings; modular portable building units for use in the construction of prefabricated relocatable buildings; prefabricated relocatable buildings constructed of modular portable building units, none of the aforesaid goods being made from or including titanium in Classes 6 and 19.

The applicant, during the appeal proceedings, in an at tempt to overcome an ob jection of descriptiveness, offered to restrict the specifications in both classes by adding, at the end, the indication none of the aforesaid goods being made from or including titanium. The Board held that such a restriction, if accepted, would have had the effect of rendering the trade mark deceptive from the standpoint of the German- speaking public, as they would assume that the goods were made from titanium when in reality this is not the case.

R 789/2001-3

An objection should be raised when the list of goods/services, worded in a detailed manner, contains goods/services in respect of which a n on-deceptive use is impossible.

In the (invented) case of a trade mark ‘KODAK VODKA’ for vodka, rum, gin, whisky, an objection should be raised in respect of the specific goods in respect of which a non- deceptive use of the trade mark is not possible, i.e. rum, gin, whisky. Such cases are substantially different from those (see here below) where broad wording/categories are used and where a non-deceptive use of the sign is possible. For example, no objection would be raised in respect of ‘KODAK VODKA’ filed for alcoholic beverages, since this broad category includes vodka, in respect of which the trade mark is not deceptive.

No objection should be raised when the list of goods/services is worded in such a broad way that a non-deceptive use is possible.

When wide categories in the list of goods/services are used, the question arises whether an objection should be raised in relation to an entire category due to the mark being deceptive in relation to only some goods/services falling within that category. The

2 These examples address only the issue of whether a deceptiveness objection should be raised or not. This paragraph does not deal with possible objections under other absolute grounds for refusal. Therefore, the possibility that a gi ven trade mark might appear to be prima facie objectionable under Article 7(1)(b) and/or (c) CTMR (or other provisions for that matter) is not contemplated here.

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policy of the Office is not to object in these circumstances. The examiner should assume that the mark will be used in a non-deceptive manner. In other words they will not object on the basis of deceptiveness wherever they can pinpoint (in a category) a non-deceptive use.

Therefore, the rule is that Article 7(1)(g) CTMR does not apply if the specification consists of wide categories which include goods/services for which use of the trade mark would be non-deceptive. For example, in the case of a trade mark ‘ARCADIA’ applied for ‘wines’, an objection under Article 7(1)(g) CTMR would not be appropriate, since the broad category ‘wines’ also covers wines originating from Arcadia (and since Arcadia – which identifies a wine-producing region in Greece – is not a protected geographical indication at Community level, there is no obligation on the part of the applicant to restrict the specification only to wines originating from Arcadia).

2.8.2 Market reality and consumers’ habits and perceptions

When assessing if a given trade mark is deceptive or not, account should be taken of market reality and consumers’ habits and perceptions.

In order to evaluate the deceptiveness of a t rade mark under Article 7(1)(g) CTMR, account must be t aken of the reality of the market (i.e. the way the goods and services are normally distributed/held out for sale/purchased/rendered, etc.) as well as of the consumption habits and perception of the relevant public, which is normally composed of reasonably well-informed, observant and circumspect persons.

For example, in the (invented) trade mark ‘ELDORADO CAFÈ LATINO’ covering coffee, preparations for use as substitutes for coffee, artificial coffee, chicory, chicory flavourings; chocolate, preparations for use as substitutes for chocolate; tea, cocoa; sugar, rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice in Class 30, the examination should lead to the following conclusions:

• An objection under Article 7(1)(g) CTMR would be j ustified in relation to preparations for use as substitutes for coffee, artificial coffee, chicory, chicory flavourings because use of the mark on these goods would be nec essarily deceptive. One would assume one was purchasing coffee and this would not in fact be the case.

• An objection under Article 7(1)(g) CTMR would also be justified in respect of tea. Given that such goods may be sold in packaging quite similar to those used for coffee, and are often bought rather hastily, it is likely that many consumers will not indulge in analysing the wording on t he packaging, but will choose these goods from the shelf in the (erroneous) belief that they are coffee.

• However, as far as coffee is concerned, there is no ‘clear contradiction’ between the claim for coffee and the wording ‘CAFÈ LATINO’, since the general category coffee may include also coffee originating from Latin America. Hence no Article 7(1)(g) CTMR objection arises for the category of coffee itself. The same logic applies in relation to goods which could be flavoured with coffee (such as chocolate, ices and pastry and confectionery) – an assumption of non-deceptive

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use should be made, and no contradiction between the said wording and the goods necessarily arises.

• Finally, for the remainder of the goods are concerned, i.e. honey, bread, vinegar etc., the presence of the wording ‘CAFÈ LATINO’ will not give rise to any expectations at all. In relation to such goods, this wording will be seen as clearly non-descriptive and hence there is no potential for actual deception. In the ‘real’ market, coffee is not displayed on the same shelves or shop sections as bread, honey or vinegar. Furthermore, the goods in question have a different appearance and taste and are normally distributed in different packaging.

2.8.3 Trade marks with geographical connotations relating to the location of the applicant or the place of origin of the goods/services

When it comes to trade marks having certain ‘geographical’ connotations relating to the location of the applicant or the place of origin of the goods/services, the following should be noted.

As a general rule, the Office will not raise an objection on deceptiveness based upon the applicant’s geographical location (address). Indeed, such a geographical location bears, in principle, no relation to the geographical origin of the goods and services, i.e. the actual place of production/offering of the goods and services covered by the mark.

As an example, a figurative mark containing the words MADE IN USA for clothing in Class 25 filed by a c ompany having its seat in Sweden would not be open t o an objection under Article 7(1)(g) CTMR. In such cases, the Office assumes a non - deceptive use of the mark on the part of the proprietor.

Deceptiveness would nonetheless arise in the hypothetical event that a figurative mark containing the words MADE IN USA, filed by a company having its seat in the United States of America, were filed for a specifically limited list of goods: clothing articles made in Vietnam – although, in practice, such cases seem unlikely to arise.

In certain cases, the sign could evoke in the consumers’ minds some impressions/expectations as to the geographical origin of the goods or of the designer thereof and which may not correspond to reality. For example, trade marks such as ALESSANDRO PERETTI or GIUSEPPE LANARO (invented examples) covering clothing or fashion goods in general may suggest to the relevant public that these goods are designed and produced by an Italian stylist, which may not be the case.

However, such a c ircumstance is not sufficient per se to render those marks misleading. Indeed, ‘false impressions/expectations’ caused by the trade mark are not tantamount to actual deceptiveness when the sign is merely evocative. In such cases there is no clear contrast between the impression/expectation a s ign may evoke and the characteristics/qualities of the goods and services it covers.

2.8.4 Trade marks making reference to an ‘official’ approval, status or recognition

It should be noted that, under the Office practice, trade marks which could evoke official approval, status or recognition without giving the firm impression that the

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goods/services issue from, or are endorsed by, a public body or statutory organisation, are acceptable.

The following are two examples where the marks concerned, although allusive or suggestive, were not found to be deceptive:

Mark and services Reasoning Case

THE ECOMMERCE AUTHORITY

for business services, namely, providing rankings of and other information regarding electronic commerce vendors, goods and services via the Internet in Class 35 and providing research and advisory services and information in the area of electronic commerce in Class 42.

The Board found that the trade mark was not deceptive, as it did not convey the firm impression that the services issue from a governmental or statutory organisation (the Board, however, confirmed the refusal under Article 7(1)(b) on the grounds that the mark lacked distinctive character, as it would be perceived by the English- speaking public merely as a s imple statement of self-promotion which claims something about the level of competence of the service providers).

R 803/2000-1

for, among other things, teaching of ski in Class 41.

The Board held that the French consumers would understand that the trade mark alludes to the fact that the services are supplied in France, by a French teaching centre, and relate to learning skiing ‘in the French way’. It added that the French public had no reason to believe, simply because of the presence of a tricolour logo (not being a r eproduction of the French flag), that the services are supplied by public authorities or even authorised by such authorities.

R 235/2009-1

confirmed by the General Court in T-41/10

2.8.5 Relation with other CTMR provisions

The above explanations aim to define the scope of application of Article 7(1)(g) CTMR. Although addressed in their respective sections of the Guidelines, in the context of absolute grounds examination and of possible deceptiveness scenarios, the following provisions may be of particular relevance.

Article 7(1)(b) and (c) CTMR

Under the current practice of the Office, if, following a descriptiveness and/or lack of distinctiveness objection, the CTM applicant proposes a l imitation in an attempt to overcome it, and provided the proposed limitation meets the prescribed requirements (unconditional request and suitably worded), the original list of goods and/or services will be limited accordingly. However, if the limitation in question (albeit overcoming the initial objection) has the effect of rendering the trade mark applied for deceptive, then the examiner will have to raise a deceptiveness objection under Article 7(1)(g) CTMR. The following example illustrates such a scenario:

The trade mark ‘ARCADIA’ was originally applied in respect of wines, spirits (beverages) and liqueurs in Class 33. The examiner objected because the trade mark was descriptive of the geographical origin of wines, to the extent that Arcadia is a

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Greek region known for its wine production (however, it should be noted that Arcadia is not a protected geographical indication). The applicant offered to limit the specification of goods to exclude wines made in Greece or, if preferred, to include only wines produced in Italy. The examiner held that the proposed limitation would render the trade mark deceptive since it would convey false information as to the origin of the goods. On appeal, the Board confirmed the reasoning of the examiner (see decision of 27/03/2000, R 246/1999-1 – ‘ARCADIA’, para. 14).

Article 7(1)(h) CTMR

This provision excludes from registration those CTMs which consist of/contain flags and other symbols of States, on the one hand, and flags and other symbols of international intergovernmental organisations on the other, which are protected according to Article 6ter of the Paris Convention and the inclusion of which in the trade mark has not been expressly authorised by the competent authorities. When it comes to the flags and other symbols of international intergovernmental organisations, the problem arises when the public might erroneously believe that, in view of the goods/services concerned, there is a connection between the CTM applicant and the international organisation whose flag or symbol appears in the CTM.

Articles 7(1)(j) and (k) CTMR (protected geographical indications)

These provisions exclude trade marks for wines or spirits, on the one hand, and other agricultural foodstuffs on the other, which contain or consist of protected geographical indications (PGIs) or protected geographical denominations (PDOs) where the list of the respective goods does not specify that they have the purported geographical origin. Under the directly applicable rules of the corresponding specific EU Regulations underlying those provisions, the Office must object to CTM applications where the protected geographic indication is misused or which convey any other false or misleading indication as to the provenance, origin, nature or essential qualities of the products concerned.

Article 17(4) CTMR (transfer)

Under this provision, where it is clear from the transfer documents that, because of the transfer, the CTM is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services in respect of which it is registered, the Office will not register the transfer unless the successor agrees to limit (the) registration of the CTM to goods or services in respect of which it is not likely to mislead (see also Part E, Section 3, Chapter 1, paragraph 3.6).

Article 51(1)(c) CTMR (grounds for revocation)

Whereas in examining a trade mark under Article 7(1)(g) CTMR an ex aminer must confine the assessment to the meaning conveyed by the sign vis-à-vis the goods/services concerned (meaning that the way the sign is actually used is of no relevance), under Article 51(1)(c) CTMR the way the sign is used is decisive, given that according to this provision a r egistered CTM may be dec lared revoked if, in consequence of the use made of the sign by its proprietor or with their consent, the

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trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods/services concerned.

2.9 Protection of flags and other symbols – Articles 7(1)(h) and (i) CTMR

The objective of Article 6ter Paris Convention (PC) is to exclude the registration and use of trade marks that are identical or in some way similar to state emblems or the emblems, abbreviations and names of international intergovernmental organisations.

‘The reasons for this are that such registration or use would violate the right of the State to control the use of symbols of its sovereignty and furthermore might mislead the public with respect to the origin of goods to which such marks would be appl ied.’ (G.H.C. Bodenhausen, Guide to the application of the Paris Convention for the Protection of Industrial Property as revised in Stockholm in 1967, page 96.). Origin in this regard must be understood as coming from or endorsed by the relevant administration, not as being produced in the territory of that state or, in the case of the EU, in the EU.

Article 7(1)(h) CTMR therefore refers to the following symbols:

• Armorial bearings, flags, other emblems, official signs and hallmarks that belong to states and have been communicated to WIPO, although, in the case of flags, such communication is not mandatory.

• Armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations that have been communicated to WIPO, with the exception of those already the subject of international agreements for ensuring their protection (see, for example, the Geneva Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces of 12/08/1949, Article 44 of which protects the emblems of the Red Cross on a white ground, the words ‘Red Cross’ or ‘Geneva Cross’, and analogous emblems).

The Court of Justice has made clear that these provisions can be applied regardless of whether the application concerns goods or services, and that the scopes of application of Article 7(1)(h) and 7 (1)(i) CTMR are analogous. Both articles should therefore be assumed to grant at least an equivalent level of protection, since they pursue the same objective, that is, to prohibit the use of specific emblems of public interest without the consent of the competent authorities (see judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, ‘RW feuille d’érable’, paras 78, 79 and 80).

2.9.1 Protection of armorial bearings, flags, other state emblems, official signs and hallmarks indicating control and warranty under Article 7(1)(h) CTMR – Article 6ter(1)(a) and (2) PC

In accordance with Article 6ter(1)(a) PC, the registration, either as a trade mark or as an element thereof, of armorial bearings, flags, and ot her state emblems of the countries of the Union (i.e. the countries to which the PC applies), or of official signs and hallmarks adopted by states as an indication of control and warranty, as well as

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any imitation from a heraldic point of view will be refused if no authorisation has been granted by the competent authority.

The members of the World Trade Organization (WTO) enjoy the same protection pursuant to Article 2(1) TRIPs, according to which members of the WTO must comply with Articles 1 to 12 and 19 PC.

Therefore, to fall foul of Article 7(1)(h) CTMR, a trade mark:

• must consist solely of an identical reproduction or a ‘ heraldic imitation’ of the abovementioned symbols;

• must contain an i dentical reproduction or a ‘heraldic imitation’ of the abovementioned symbols.

Furthermore, the competent authority must not have given its authorisation.

Armorial bearings consist of a design or image depicted on a shield. See the following example.

Bulgarian armorial bearing – 6ter database No BG2

State flags usually consist of a distinctive rectangular design that is used as the symbol of a nation. See the following example.

Croatian flag

The expression ‘other State emblems’ is rather vague. It usually indicates any emblems constituting the symbol of the sovereignty of a State, including the escutcheons of reigning houses as well as emblems of States included in a federative state that is party to the Paris Convention. See the following example.

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Danish state emblem – 6ter database No DK3

The purpose of official signs and hallmarks indicating control and warranty is to certify that a state or an organisation duly appointed by a state for that purpose has checked that certain goods meet specific standards or are of a given level of quality. There are official signs and hallmarks indicating control and warranty in several states for precious metals or products such as butter, cheese, meat, electrical equipment, etc. Official signs and hallmarks may also apply to services, for instance those relating to education, tourism, etc. See the following examples.

Official Spanish sign for export promotion No ES1

UK hallmark for platinum articles No GB 40

It must be not ed that Article 6ter PC does not protect the abovementioned symbols against all imitations, only ‘heraldic imitations’. The notion of ‘heraldic imitation’ must be construed in the sense that ‘… the prohibition of the imitation of an emblem applies only to imitations of it from a heraldic perspective, that is to say, those which contain heraldic connotations which distinguish the emblem from other signs. Thus, the protection against any imitation from a heraldic point of view refers not to the image as such, but to its heraldic expression. It is therefore necessary, in order to determine whether the trade mark contains an imitation from a heraldic point of view, to consider the heraldic description of the emblem at issue’ (see CJEU judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, para. 48).

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Consequently, when making a comparison ‘from a heraldic point of view’ within the meaning of Article 6ter PC, account must be t aken of the heraldic description of the emblem concerned and not any geometric description of the same emblem, which is by nature much more detailed. Indeed, if the geometric description of the emblem were taken into account, this ‘… would lead to the emblem being refused protection under Article 6ter(1)(a) of the Paris Convention in the event of any slight discrepancy between the two descriptions. Secondly, the case of graphic conformity with the emblem used by the trade mark is already covered by the first part of that provision, so that the expression “any imitation from a heraldic point of view” must be different in its scope’ (see ibidem, para. 49).

For example, an examiner should take into account the heraldic description of the

European emblem – ‘on an azure field a circle of twelve golden mullets, their points not touching’ – and not its geometrical description: ‘the emblem is in the form of a blue rectangular flag of which the fly is one and a hal f times the length of the hoist. Twelve gold stars situated at equal intervals form an invisible circle whose centre is the point of intersection of the diagonals of the rectangle. The radius of the circle is equal to one third of the height of the hoist. Each of the stars has five points which are situated on the circumference of an invisible circle whose radius is equal to one eighteenth of the height of the hoist. All the stars are upright — that is to say, with the one point vertical and two points in a straight line at right angles to the mast. The circle is arranged so that the stars appear in the position of the hours on the face of a clock. Their number is invariable.’

Furthermore, armorial bearings and other heraldic emblems are drawn on the basis of a relatively simple description of the layout and background colour that also lists the different elements (such as a lion, an eagle, a flower, etc.) constituting the emblem and gives information on their colour and position within the emblem. However, a heraldic description does not give details of the design of the emblem and the specific elements that constitute it, with the result that a number of artistic interpretations of one and the same emblem on the basis of the same heraldic description are possible. Although there may be di fferences in detail between each of those interpretations, the fact remains that they will all be imitations ‘from a h eraldic point of view’ of the emblem concerned (T-215/06, 28/02/2008, paras 71 and 72).

It follows that a trade mark that does not exactly reproduce a state emblem can nevertheless be covered by Article 6ter(1)(a) PC where it is perceived by the relevant public as imitating such an emblem. So far as the expression ‘imitation from a heraldic point of view’ in that provision is concerned, a difference detected by a s pecialist in heraldic art between the trade mark applied for and the State emblem will not necessarily be perceived by the average consumer who, in spite of differences at the level of certain heraldic details, can see in the trade mark an imitation of the emblem in question (see CJEU judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, paras 50 and 51).

Furthermore, for Article 6ter(1)(a) PC to apply, it is not necessary to examine the overall impression produced by the mark by taking into account also its other elements (words, devices, etc.).

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Indeed, Article 6ter(1)(a) PC applies not only to trade marks but also to elements of marks that include or imitate state emblems. It is sufficient, therefore, for a single element of the trade mark applied for to represent such an emblem or an imitation thereof for that mark to be refused registration as a Community trade mark (see also judgment of 21/04/2004, T-127/02, ‘ECA’, paras 40 to 41).

2.9.1.1 Examination of marks consisting of or containing a state flag

There are three steps to examining marks that consist of or contain a state flag:

1 Find an official reproduction of the protected flag. 2 Compare the flag with the mark applied for. Does the mark applied for consist

solely of or contain an identical reproduction of the flag (b)? Or does the mark consist solely of or contain a heraldic imitation of that flag (b)?

3 Check whether there is any evidence on f ile to show that registration of the flag has been authorised by the competent authority.

1 Find the protected flag

As seen above, states are not obliged to include flags in the list of emblems to be communicated to WIPO. This is because flags are supposed to be well known.

Nevertheless, some flags have been included in the list, which is accessible via the ‘Article 6ter Structured Search’ tool made available by WIPO. Otherwise, examiners should refer to the official websites of the relevant governments, and to encyclopaedias and/or dictionaries for an accurate reproduction of the state flag.

2 Compare the flag with the mark applied for

(a) Does the mark applied for consist solely of or contain an identical reproduction of a flag? If so, proceed to the next step.

(b) Does the mark consist solely of or contain a heraldic imitation of a flag?

In the case of flags, the mark must be compared with the heraldic description of the flag at issue. For example, in Case T-41/10 of 05/05/2011 (ESF Ecole du ski français), the French flag was described as a rectangular or square flag made up of three equal vertical bands of the colours blue, white and red.

The examiner will use the heraldic description, which gives details of the layout and background colour, lists the different elements (such as a lion, an eagle, a flower, etc.) that constitute the flag and specifies the colour, position and proportions of the latter to reach a conclusion on heraldic imitation.

As a rule, the flag and the mark (or the part of the mark in which the flag is reproduced) must be quite similar in order for a heraldic imitation to be found.

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See the following example where a ‘heraldic imitation’ of a flag was found:

Flag Refused CTMA

Swiss flag CTMA 8 426 876

The use of a flag in black and white may still be considered a heraldic imitation when the flag consists of or contains unique heraldic features. For example, the black-and- white representation of the Canadian flag in the following example is considered to be a heraldic imitation.

Flag Refused CTMA

Canadian flag CTMA 2 793 495

On the other hand, for flags consisting only of stripes of three colours (whether vertical or horizontal) a black-and-white reproduction will not be considered a heraldic imitation because flags of that kind are quite common.

As seen above, the presence of other elements in the marks is irrelevant; this is confirmed by the Board of Appeal’s refusal of CTMA 10 502 714.

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Flag Sign

The flags of, for example, Belgium, Czech Republic, France, Italy, Latvia, Austria, Finland and Sweden.

CTMA 10 502 714, R 1291/2012-2

‘… the flags … are all represented in the mark and will be immediately recognized as such by the public coming from those parts of the EU, as well as many others across the relevant territory. … they do not merge into each other in a way which dissipates their individual characteristics. It must also be noted that the flags appearing at the bottom of the mark … are not upside down, but are presented exactly as they would be normally.

As noted by the Court in the judgment of 16 July 2009, C-202/08 P and C-208/08 P, ‘RW feuille d’érable’ at para. 59, Article 6ter(1)(a) of the Paris Convention applies not only to trade marks but also to elements of marks which include or imitate State emblems. It is sufficient, therefore, for a single element of the trade mark applied for to represent such an emblem or an imitation thereof for that mark to be refused registration as a Community trade mark … Therefore the applicant’s arguments that although the mark contains various national flags, this is only a s mall part of the mark which is overwhelmed by the presence of the additional elements and that these elements are more dominant and distinctive, fail.’ (paras 18-19)

If an element is a different shape from a flag (e.g. circular), it is not considered to be a heraldic imitation. Other different shapes that are not heraldic imitations are shown in the following examples:

Flag Accepted CTMA

CTMA 5 851 721

Italian flag CTMA 5 514 062

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Swiss flag CTMA 6 015 473

Finnish flag CTMA 7 087 281

Flag Accepted CTMA

Swedish flag CTMA 8 600 132

Danish flag CTMA 8 600 173

French flag CTM 4 624 987, T-41/10

The distinction between the cases examined in CTMA No 8 426 876 (objected to) and CTMA No 6 015 473 (not objected to) should be noted. In the latter, it was decided not to object because of the number of changes: a change in the shape (from a square to a circle), a change in proportions (the white lines of the cross in CTMA No 6 015 473 are

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longer and thinner than in the flag) and a change of colour, since the cross in CTMA No 6 015 473 has a shadow.

3 Check whether registration has been authorised

Once the examiner has found that the mark consists of or contains a flag or a heraldic imitation thereof, he/she must check whether there is any evidence on file to show that the registration has been authorised by the competent authority.

Where there is no s uch evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the official flag in colour and indicate the source of the reproduction.

Such an obj ection can only be waived if the applicant produces evidence that the competent authority of the state concerned has authorised registration of the mark.

Extent of the refusal: In the case of state flags, trade marks that fall foul of Article 7(1)(h) CTMR must be refused for all goods and services applied for.

2.9.1.2 Examination of marks consisting of or containing armorial bearings and other state emblems

The same steps mentioned in relation to State flags are followed also when examining marks that consist of or contain armorial bearings or other state emblems.

Nevertheless, to be p rotected, armorial bearings and ot her state symbols must be contained in ‘the list of armorial bearings and state emblems’. This list is accessible via the ‘Article 6ter Structured Search’ tool made available by WIPO at https://www.wipo.int/ipdl/en/6ter/.

The WIPO Article 6ter database gives details of written elements and c ontains references to the categories of the Vienna classification code. Therefore, the best way to search is by using that code.

In these cases, the protected symbol, which very often consists of or contains recurring devices such as crowns, unicorns, eagles, lions, etc., and the mark (or the part of the mark in which the symbol is reproduced) must be closely similar.

For background on t his and her aldic descriptions, please see the explanation in paragraph 2.8.1.1 ‘Examination of marks consisting of or containing a state flag’ above.

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Here are two examples where a ‘heraldic imitation’ of a state symbol was found:

Protected emblem Refused CTMA

British emblem: 6ter Number: GB4 CTMA 5 627 245, T-397/09

.

Canadian emblem: 6ter Number: CA2 CTMA 2 785 368 (CJEU C-202/08)

The General Court noted that the supporters contained in CTMA No 5 627 245 were almost identical to those in the emblem protected under sign GB4. The only difference lay in the crowns in both signs. However, the GC ruled that any difference between the mark and the state emblem detected by an expert in heraldry would not necessarily be perceived by the average consumer who, despite some differences in heraldic details, can see in the mark an imitation of the emblem. Therefore, the GC concluded that the Board was right to find that the mark applied for contained an imitation from a heraldic perspective of emblem GB4, protected under Article 6ter of the Paris Convention (Case T-397/09, paras 24-25).

In the example reproduced below a ‘heraldic imitation’ of state emblems was found by the examiner. However, the decision was annulled by the Board which considered that the sign applied for is not identical to the national emblem of Ireland. It does not contain an imitation of the national emblems of Ireland either and i t does not reproduce characteristic heraldic features of these emblems (R 0139/2014-5, para. 16):

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State emblem CTMA

Irish state emblems: 6ter Numbers: IE 11 - IE 14 CTMA 11 945 797

It should also be noted that black-and-white reproductions of armorial bearings and other state emblems may still be considered heraldic imitations when the protected symbol consists of or contains unique heraldic features (see the example of the Canadian emblem).

Furthermore, the presence of other elements in the rejected marks is irrelevant.

There is even a her aldic imitation when the protected symbol is only partially reproduced as long as what is partially reproduced represents the significant element(s) of the protected symbol and (a) unique heraldic feature(s).

The following is an example of a par tial heraldic imitation because the significant element of the protected symbol, the eagle with the arrows over the emblem, is a unique heraldic device and its heraldic characteristics are imitated in the CTMA:

Protected emblem Refused CTMAt

Emblem of the Justice Department of the USA; 6ter Number: US40 CTMA 4 820 213

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In the following example there is no heraldic imitation of a state emblem:

Protected emblem Accepted CTMA

6ter number: AT10 CTMA 8 298 077

CTMA No 8 298 077 is not a her aldic imitation of the Austrian symbol because its shape is different and the lines inside the white cross in the Austrian symbol are not present in the CTMA.

Once the examiner has found that a mark reproduces a s ymbol (or is a her aldic imitation thereof), they must check whether there is any evidence on f ile to show that registration has been authorised by the competent authority.

Where there is no s uch evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the protected symbol, quoting its 6ter number.

Such an obj ection can only be waived if the applicant produces evidence that the competent authority of the state concerned has authorised registration of the mark.

Extent of the refusal: In the case of state symbols, trade marks that fall foul of Article 7(1)(h) CTMR must be refused for all goods and services applied for.

2.9.1.3 Examination of marks consisting of or containing official signs and hallmarks indicating control and warranty

The steps to be followed by the examiner are the same as for the state flags, protected armorial bearings and other state emblems mentioned above.

However, the extent of the refusal is limited. Trade marks that consist of or contain an identical reproduction / heraldic imitation of official signs and hal lmarks indicating control and warranty will be refused only for goods that are identical or similar to those to which said symbols apply (Article 6ter(2) PC).

2.9.2 Protection of armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations under Article 7(1)(h) CTMR – Article 6ter(1)(b) and (c) PC

In accordance with Article 6ter(1)(b) and (c) PC, the registration, either as a trade mark or as an element thereof, of armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations (of which one or more countries

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of the Paris Union is / are member(s)) or any imitation from a heraldic point of view will be refused if no authorisation has been granted by the competent authority.

The members of the WTO enjoy the same protection pursuant to Article 2(1) TRIPs, according to which members of the WTO must comply with Articles 1 to 12 and 19 of the Paris Convention.

Furthermore, the trade mark should be of such a nature as to suggest to the public that there is a connection between the organisation concerned and the armorial bearings, flags, emblems, abbreviations or names, or to mislead the public as to the existence of a connection between the owner and the organisation.

International intergovernmental organisations (IGOs) include bodies such as the United Nations, the Universal Postal Union, the World Tourism Organization, WIPO, etc.

In this respect, the European Union must be c onsidered neither as an international organisation in the usual sense nor as an as sociation of states, but rather as a ‘supranational organisation’, i.e. an autonomous entity with its own sovereign rights and a legal order independent of the Member States, to which both the Member States themselves and their nationals are subject within the EU’s areas of competence.

On the one hand, the Treaties have led to the creation of an i ndependent Union to which the Member States have ceded some of their sovereign powers. The tasks allotted to the EU are very different from those of other international organisations. While the latter mainly have clearly defined tasks of a t echnical nature, the EU has areas of responsibility that together constitute essential attributes of statehood.

On the other hand, the EU institutions too only have powers in certain areas to pursue the objectives specified in the Treaties. They are not free to choose their objectives in the same way as a sovereign state. Moreover, the EU has neither the comprehensive jurisdiction enjoyed by sovereign states nor the powers to establish new areas of responsibility (‘jurisdiction over jurisdiction’).

Notwithstanding the particular legal nature of the EU, and for the sole purpose of the application of Article 7(1)(h), the European Union is likened to an international organisation. In practice, account will be taken of the fact that the EU’s field of activity is so broad (see judgment of 15/01/2013, Case T-413/11 ‘EUROPEAN DRIVESHFT SERVICES’, para. 69) that the examiner is very likely to find a link between the goods and services in question and the EU’s activities.

The most relevant EU flags and s ymbols, protected by the Council of Europe, are shown here:

6ter number: QO188 6ter number: QO189

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The following have been protected for the Commission:

6ter number: QO245 6ter number: QO246 6ter number: QO247

The following have been protected for the European Central Bank:

6ter number: QO852 6ter number: QO867

There are four steps to examining marks that contain the armorial bearing, flag or other symbols of an international intergovernmental organisation.

1 Find an of ficial reproduction of the protected symbol (which may be an abbreviation or name).

2 Compare the symbol with the mark applied for.

3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and the international organisation or misleads the public as to the existence of such a connection.

4 Check whether there is any evidence on file to show that registration has been authorised by the competent authority.

1 Find the protected symbol (or abbreviation or name)

To be protected, the symbols of international intergovernmental organisations must be incorporated in the relevant list. Unlike the situation with state flags, this requirement also applies to international organisations’ flags.

The relevant database is accessible via the ‘Article 6ter Structured Search’ tool provided by WIPO. In this case too, the best way to search is by using the Vienna classification code.

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2 Compare the symbol with the mark applied for

Does the mark applied for consist solely of or contain an identical reproduction of the protected symbol of an international intergovernmental organisation Or does the mark applied for consist of or contain a heraldic imitation thereof?

(a) Does the mark applied for consist solely of or contain an identical reproduction of the protected symbol? If so, proceed to the next step.

(b) Does the mark applied for consist solely of or contain a heraldic imitation thereof?

The test is the same as that for state flags and symbols, that is, the protected symbol and the mark (or the part of the mark in which the protected symbol is reproduced) must be closely similar. The same applies to abbreviations and names of international intergovernmental organisations (see the Board’s decision in Case R 1414/2007-1 – ‘ESA’).

The following marks were rejected because they were considered to contain ‘heraldic imitations’ of the European Union flag protected under QO188:

CTMA 2 305 399 CTMA 448 266 CTMA 6 449 524

CTMA 7 117 658 CTMA 1 106 442 (T-127/02) CTM 4 081 014 (1640 C)

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CTMA 2 180 800 (T-413/11) For heraldic imitations of the European Union flag (QO188 above), it is considered relevant that (a) there are 12 five-pointed stars, (b) the stars are in a circle and are not touching each other, and (c) the stars contrast with a darker background.

In particular, it must be taken into account that the ‘device in the form of twelve stars arranged in a circle is the most important element of the European Union emblem (‘the emblem’) because it conveys strong messages: (a) the circle of gold stars symbolises solidarity and har mony between the peoples of Europe and ( b) the number twelve evokes perfection, completeness and uni ty. The other element of the emblem is a background suitably coloured to highlight the device’ (see BoA decision in case R 1401/2011-1, para. 21).

It follows from the above that the representation of the EU flag in black and white may still be considered a heraldic imitation when the stars contrast with a dark background in such a way as to give the impression of being a black-and-white reproduction of the EU flag (see CTMA 1 106 442 above).

In contrast, the following example illustrates a c ase where the black-and-white reproduction of a circle of stars does not give the impression of being a black-and-white reproduction of the EU flag:

The following three cases are not considered to be heraldic imitations of the European Union flag because they do not reproduce twelve stars in a circle (i.e. both marks were accepted):

CTMA 5 639 984 CTMA 6 156 624

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The following is not a heraldic imitation because, although the stars are yellow, there is no blue (or dark-coloured) background:

3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and the international organisation or misleads the public as to the existence of such a connection.

A connection is suggested not only where the public would believe that the goods or services originate with the organisation in question, but also where the public could believe that the goods or services have the approval or warranty of, or are otherwise linked to, that organisation (see GC judgment of 15/01/2013, Case T-413/11, ‘EUROPEAN DRIVESHAFT SERVICES’, para. 61).

In order to assess the circumstances properly, the examiner must take into account the following:

- the goods and/or services covered by the CTM application;

- the relevant public;

- the overall impression conveyed by the mark.

With regard to the European Union flag, the examiner must evaluate whether there is any overlap between the claimed goods and / or services and the European Union’s activities, bearing in mind that the European Union is active in numerous sectors and regulates goods and services in all fields of industry and commerce, as is clear from the wide variety of Directives that it has adopted. Likewise, the examiner must take into account that even average consumers could be aware of such activities, which means, in practice, that the examiner is very likely to find a link in most cases.

Finally, in contrast to Article 6ter(1)(a) PC, for which it is sufficient for the sign to consist of or contain the emblem or a heraldic imitation thereof, Article 6ter(1)(c) PC requires an overall assessment.

It follows that, unlike for state emblems and flags, the examiner must take into account also the other elements of which the mark is composed. For it cannot be ruled out that all the other elements of the sign could lead to the conclusion that the public would not connect the sign with an international intergovernmental organisation (see judgment of 15/01/2013, Case T-413/11 ‘EUROPEAN DRIVESHAFT SERVICES’, para. 59).

Still with regard to the EU flag, it must be noted that, as a rule, word elements such as ‘EURO’/‘EUROPEAN’ in a CTMA are likely to suggest a connection even more, since

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they could be perceived as implying an official EU agency’s approval, quality control or warranty services in respect of the claimed goods and services.

Here are two examples of where a connection with the EU was found:

G&S Class 16: Periodical and other publications Class 42: Preparation of reports or studies relating to cars, motorcycles and bicycles

Reasoning

The mark was refused for all the goods and services for the following reasons: (26) Consumers in this market are aware of how important it is for companies that provide surveys and reports on expensive and potentially dangerous goods like vehicles to be credible. Consumers may also be aware that the European Union itself is involved in such activities through its association with Euro E.N.C.A.P., which provides motoring consumers with independent assessments of the safety and performance of cars sold on the European market. Given these facts, and the fact that the proprietor’s mark contains a r ecognisable heraldic element of the European emblem, it is likely that the public would assume that the inclusion of the twelve gold stars of the EU emblem in the CTM pointed to a c onnection between the proprietor and the EU.

G&S Class 9: Computer hardware, computer software, recorded data carriers. Class 41: Arranging and conducting of colloquiums, seminars, symposiums, congresses and conferences; providing of tuition, instruction, training; consultancy on training and further training. Class 42: Creating, updating and maintenance of computer programs; computer program design; consultancy in the field of computers; rental of computer hardware and computer software; leasing access time to a computer database.

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Reasoning

The mark was refused for all the goods and services for the following reasons: The Board of Appeal found that, contrary to what the applicant claimed, there was some overlap between the goods and services offered by the applicant and the activities of the Council of Europe and the European Union. The Board of Appeal referred, inter alia, to the Official Journal of the European Union, which is available on CD-ROM (i.e. on a record data carrier), to seminars, training programmes and conferences offered by the Council of Europe and the European Union in a variety of areas, and to a large number of databases made available to the public by those institutions, in particular EUR-Lex. Given the wide variety of services and goods that may be offered by the Council of Europe and the European Union, it cannot be ruled out, for the kind of goods and services for which registration was sought, that the relevant public might believe that there is a c onnection between the applicant and those institutions. Accordingly, the Board of Appeal was right to find that registration of the mark sought was likely to give the public the impression that there was a connection between the mark sought and the institutions in question.

4 Check whether registration has been authorised

Where there is no evidence that registration of the mark applied for has been authorised, the examiner will object to its registration. The objection must reproduce the protected symbol, quoting its 6ter number.

The examiner must also indicate the refused goods and s ervices clearly and g ive reasons why the mark suggests to the public a c onnection with the organisation concerned.

Such an obj ection can only be waived if the applicant provides evidence that the competent authority has authorised registration of the mark.

Extent of the refusal: In the case of flags and symbols of international intergovernmental organisations, the refusal must specify the goods and / or services affected, that is, those in respect of which the public would, according to the examiner, see a connection between the mark and an organisation.

2.9.3 Protection of badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention under Article 7(1)(i) CTMR

In accordance with Article 7(1)(i) CTMR, trade marks will not be r egistered if they include badges, emblems or escutcheons other than those that are covered by Article 6ter of the Paris Convention and are of particular public interest, unless the competent authority has consented to their registration.

As seen above, Article 7(1)(i) CTMR refers to all other badges, emblems or escutcheons that have not been communicated in accordance with Article 6ter(3)(a) PC regardless of whether they are the emblems of a state or international intergovernmental organisation within the meaning of Article 6ter(1)(a) or (b) PC or of public bodies or administrations other than those covered by Article 6ter PC, such as provinces or municipalities.

Furthermore, according to the case-law, Article 7(1)(i) and A rticle 7(1)(h) CTMR both have a similar scope of application and grant at least equivalent levels of protection.

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This means that Article 7(1)(i) CTMR applies not only where the abovementioned symbols are reproduced identically as a trade mark or a part thereof, but also where the mark consists of or contains a heraldic imitation of those symbols. Any other interpretation of this provision would result in less protection being provided by Article 7(1)(i) CTMR than by Article 7(1)(h) CTMR. Following the same line of reasoning, Article 7(1)(i) CTMR applies where the mark is liable to mislead the public as to the existence of a connection between the owner of the trade mark and the body to which the abovementioned symbols refer. In other words, the protection afforded by Article 7(1)(i) CTMR is conditional on a l ink between the mark and the symbol. Otherwise, trade marks to which Article 7(1)(i) CTMR applies, would obtain broader protection than under Article 7(1)(h) CTMR (see judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’).

Article 7(1)(i) does not define symbols of ‘particular public interest’. However, it is reasonable to assume that the nature of these could vary and could include, for example, religious symbols, political symbols or symbols of public bodies or administrations other than those covered by Article 6ter PC, such as provinces or municipalities. In any case, the ‘particular public interest’ involved must be reflected in a public document, for example a national or international legal instrument, regulation or other normative act.

The General Court stated that a ‘particular public interest’ existed when the emblem had a particular link with one of the activities carried out by an international intergovernmental organisation (see judgment of 10/07/2013, Case T-3/12, ‘MEMBER OF EURO EXPERTS’, para. 44). In particular, the Court specified that Article 7(1)(i) CTMR applied also when the emblem merely evoked one of the fields of activity of the European Union, and even if that activity concerned only some of the EU states (see ibidem, paras 45 and 46).

This confirms that the protection afforded by Article 7(1)(i) CTMR applies also to symbols that are of particular public interest in only a single Member State or part thereof (Article 7(2) CTMR).

There are four steps to examining marks that contain badges, emblems and escutcheons of particular public interest.

1 Find the symbol of particular public interest.

2 Compare the symbol with the mark applied for.

3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and the authority to which the symbol refers or misleads the public as to the existence of such a connection.

4 Check whether there is any evidence on file to show that registration has been authorised by the appropriate authority.

1 Find the symbol of particular public interest

At present, there is no l ist or database allowing examiners to identify which symbols are of particular public interest, especially in a Member State or part thereof. Therefore,

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third party observations are likely to remain the source of many objections to such symbols.

One example of a s ymbol of particular public interest is the Red Cross, which is protected by the Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces in the Field, signed in Geneva (http://www.icrc.org/ and http://www.icrc.org/Web/Eng/siteeng0.nsf/htmlall/genevaconventions).

The following symbols are protected under the Geneva Convention:

Apart from the symbols, their names are also protected (from left to right) as follows: ‘Red Cross’, ‘Red Crescent’ and ‘Red Crystal’.

Another example of a symbol of particular public interest is the Olympic symbol as defined in the Nairobi Treaty on the Protection of the Olympic Symbol. According to the definition in the Nairobi Treaty, ‘the Olympic symbol consists of five interlaced rings: blue, yellow, black, green and red, arranged in that order from left to right. It consists of the Olympic rings alone, whether delineated in a single color or in different colors.’

The following symbol was considered not to be a symbol of particular public interest:

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The recycling symbol (on the left) was not considered to be protected under this provision because it is a commercial symbol.

2 Compare the symbol with the mark applied for

Does the mark applied for consist solely of or contain an identical reproduction of the symbol of particular public interest? Or does the mark applied for consist of or contain a heraldic imitation thereof?

(a) Does the mark applied for consist solely of or contain an identical reproduction of the symbol? If so, proceed to the next step.

(b) Does the mark applied for consist solely of or contain a heraldic imitation of the symbol?

The test is the same as the one for flags and symbols of international intergovernmental organisations, that is, the symbol and t he mark (or the part of the mark in which the symbol is reproduced) must be quite similar.

The following are examples of marks that were rejected because they contained the Red Cross symbol or a heraldic imitation thereof.

Refused CTMAs

WO 964 979 CTMA 2 966 265 CTMA 5 988 985

On the other hand, a number of well-known red crosses have traditionally been used and are still in use, the incorporation of which in a m ark would not be considered a reproduction of the ‘Red Cross’. Examples of these famous crosses include the following:

Templar cross St George’s cross Maltese cross

The following CTM was accepted because it contained two reproductions of the Templar cross.

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A mark which contains a c ross in black and white (or shades of grey) is not objectionable. Nor is a cross in a c olour other than red objectionable under Article 7(1)(i) CTMR.

Accepted CTMAs

CTMA 8 986 069 CTMA 9 019 647 CTMA 9 025 768

3 Check whether the mark applied for suggests to the relevant public that there is a connection between the owner and t he authority to which the symbol refers or misleads the public as to the existence of such a connection.

A connection is suggested not only where the public would believe that the goods or services originate with the authority in question, but also where the public could believe that the goods or services have the approval or warranty of, or are otherwise linked to, that authority (see GC judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’, para. 78).

In order to assess the circumstances properly, the examiner must, as above, take into account the following:

• the goods and/or services covered by the CTM application;

• the relevant public;

• the overall impression conveyed by the mark.

The examiner must evaluate whether there is any overlap between the claimed goods and / or services and the activities of the authority at issue and whether the relevant public could be aware of it.

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In particular, with regard to the European Union, the examiner must take into account that the latter is active in numerous fields, as is clear from the wide variety of Directives that it has adopted.

Furthermore, the examiner must also take into account the other elements of which the mark is composed. For it cannot be r uled out that all the other elements of the sign could lead to the conclusion that the public would not connect the sign with the authority concerned (see GC judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’, para. 107).

Still with regard to the EU, it must be not ed that, as a r ule, word elements such as ‘EURO’/‘EUROPEAN’ in a CTMA are likely to suggest a connection even more, since they could be perceived as implying EU approval (see GC judgment of 10/07/2013, Case T-3/12 ‘MEMBER OF EURO EXPERTS’, para. 113).

For example, the General Court (in Case T-3/12) confirmed that the following mark (CTMA No 6 110 423, covering Classes 9, 16, 35, 36, 39, 41, 42, 44 and 45)

fell foul of Article 7(1)(i) CTMR since it contained a (heraldic) imitation of the ‘Euro’ symbol.

4 Check whether registration has been authorised

Is there any evidence on file that the appropriate authority has authorised registration?

Where there is no s uch evidence, the examiner will object to the registration of the mark applied for. The objection will reproduce the symbol and pr ovide the applicant with all necessary details and, in particular, information on w hy the symbol is of ‘particular public interest’ (for example, if protected by an international instrument, a reference to that instrument; in the case of the Red Cross this is the Convention for the Amelioration of the Condition of the Wounded and S ick in Armed Forces in the

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Field, signed in Geneva (http://www.icrc.org/ and http://www.icrc.org/Web/Eng/siteeng0 .nsf/htmlall/genevaconventions)).

Such an objection can only be waived if the applicant submits evidence that the appropriate authority has consented to registration of the mark.

Extent of the refusal: In the case of symbols of particular public interest, the refusal must specify the goods and / or services affected, that is, those in respect of which the public would, according to the examiner, see a connection between the mark and the authority.

2.10 Article 7(1)(j) CTMR

2.10.1 Introduction

Article 7(1)(j) CTMR applies to CTMs that are in conflict with geographical indications for wines and spirits.

More specifically, it provides for the refusal of CTMs for wines that contain or consist of a geographical indication identifying wines or for spirits that contain or consist of a geographical indication identifying spirits in respect of wines or spirits not of such origin.

Article 7(1)(j) CTMR does not explicitly refer to the specific EU regulations on the protection of geographical indications for wines and spirits. In this respect, the Office follows a s ystematic approach and interprets Article 7(1)(j) CTMR in line with Article 7(1)(k) CTMR. That is to say, the Office applies Article 7(1)(j) CTMR in conjunction with the relevant provisions of the EU regulations on t he protection of geographical indications for wines and spirits, namely Council Regulation (EU) No 1308/20133 and Regulation (EC) No 110/2008 of the European Parliament and of the Council4 respectively.

According to Article 93 of Regulation (EU) No 1308/2013:

(a) ‘designation of origin’ means the name of a region, a s pecific place or, in exceptional cases, a c ountry used to describe a wine that complies with the following requirements:

(i) its quality and c haracteristics are essentially or exclusively due t o a particular geographical environment with its inherent natural and human factors;

(ii) the grapes from which it is produced come exclusively from this geographical area;

(iii) its production takes place in this geographical area; and (iv) it is obtained from vine varieties belonging to Vitis vinifera;

3 Council Regulation (EU) No 1308/2013 of 17 December 2013 establishing a common organisation of the markets in agricultural products.

4 Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and t he protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89.

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(b) ‘geographical indication’ means an i ndication referring to a r egion, a s pecific place or, in exceptional cases, a country, used to describe a wine that complies with the following requirements:

(i) it possesses a s pecific quality, reputation or other characteristics attributable to that geographical origin;

(ii) at least 85 % of the grapes used for its production come exclusively from this geographical area;

(iii) its production takes place in this geographical area; and (iv) it is obtained from vine varieties belonging to Vitis vinifera or a c ross

between the Vitis vinifera species and other species of the genus Vitis.

According to Article 15(1) of Regulation (EC) No 110/2008, a ‘geographical indication’ is an indication that identifies a spirit drink as originating in the territory of a country, or a region or locality in that territory, where a g iven quality, reputation or other characteristic of that spirit drink is essentially attributable to its geographical origin.

Protected designations of origin (PDOs) therefore have a closer link with the area. This distinction, however, does not affect scope of protection, which is the same for PDOs and PGIs (protected geographical indications). In other words, Article 7(1)(j) CTMR applies equally to all designations covered by Regulation (EU) No 1308/2013, regardless of whether they are registered as PDOs or as PGIs. Regulation No 110/2008, however, covers only PGIs, not PDOs.

Protection is granted to PDOs/PGIs in order, inter alia, to protect the legitimate interests of consumers and producers.

In this respect, it must also be underlined that the concepts of PDO and PGI differ from a ‘simple indication of geographical provenance’. For the latter, there is no direct link between a s pecific quality, reputation or other characteristic of the product and i ts specific geographical origin, with the result that it does not come within the scope of Article 93 of Regulation (EU) No 1308/2013 or Article 15(1) of Regulation (EC) No 110/2008 (see, by analogy, judgment of 07/11/2000, C-312/98, ‘Warsteiner Brauerei’, paras 43 and 44). For example, ‘Rioja’ is a PDO for wines since it designates a wine with particular characteristics that comply with the definition of a PDO. However, wine produced in ‘Tabarca’ (a ‘simple geographical indication’ designating a s mall island close to Alicante) cannot qualify for a PDO/PGI unless it meets specific requirements.

According to Article 102(1) of Regulation (EU) No 1308/2013, the registration of a trade mark that contains or consists of a pr otected designation of origin or a geographical indication which does not comply with the product specification concerned or the use of which falls under Article 103(2), and that relates to a product falling under one of the categories listed in Part II of Annex VII shall be refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the designation of origin or geographical indication to the Commission and the designation of origin or geographical indication is subsequently protected.

Furthermore, according to Article 23(1) of Regulation (EC) No 110/2008, ‘the registration of a trade mark which contains or consists of a geographical indication registered in Annex III shall be refused or invalidated if its use would lead to any of the situations referred to in Article 16’.

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Article 103(2) of Regulation (EU) No 1308/2013 and A rticle 16 of Regulation (EC) No 110/2008 set out the situations that infringe the rights deriving from a P DO/PGI: (i) direct or indirect commercial use of the PDO/PGI; (ii) misuse, imitation or evocation; (iii) other misleading practices.

Three cumulative conditions are necessary in order for Article 7(1)(j) CTMR to apply.

1. The PDO/PGI in question must be registered at EU level (see paragraph 2.9.2.1 below).

2. Use of the CTM that consists of or contains a PDO/PGI for wines or a PGI for spirits must constitute one of the situations provided for in Article 103(2) of Regulation (EU) No 1308/2013 or in Article 16 of Regulation (EC) No 110/2008 (see paragraph 2.9.2.2 below).

3. The CTM application must include goods that are identical or ‘comparable’ to the goods covered by the PDO/PGI (see paragraph 2.9.2.3 below).

For these three conditions, reference is made below to: (i) which PDOs/PGIs may give rise to an objection under Article 7(1)(j) CTMR; (ii) under what circumstances a CTM contains or consists of a PDO/PGI in such a way that it falls under Article 103(2) of Regulation (EU) No 1308/2013 or Article 16 of Regulation (EC) No 110/2008; (iii) the goods of the CTM application affected by the protection granted to the PDO/PGI. Finally, reference is also made below to how goods can be restricted in order to waive an objection.

2.10.2 The application of Article 7(1)(j) CTMR

2.10.2.1 Relevant PDOs/PGIs

Article 7(1)(j) CTMR applies where PDOs/PGIs (either from an E U Member State or from a t hird country) have been r egistered under the procedure laid down by Regulations No 1308/2013 and No 110/2008.

For third-country PDOs/PGIs that enjoy protection in the European Union through international agreements concluded between the European Union and third countries see paragraph 2.9.3.2 below.

Relevant information about PDOs/PGIs for wines can be f ound in the ‘E-Bacchus’ database maintained by the Commission, which can be accessed through the internet at http://ec.europa.eu/agriculture/markets/wine/e-bacchus/. PGI’s for spirit drinks are listed in Annex III of Regulation No 110/2008 (Article 15(2) of Regulation No 110/2008), as amended, which can be accessed at http://eur-lex.europa.eu/legal-content/EN/TXT/ PDF/?uri=CELEX:32012R0164&from=EN. The Commission also maintains a database, ‘E-Spirit-Drinks’, accessible at http://ec.europa.eu/agriculture/spirits/. However, this is not an official register and is, therefore, only informative in character.

Protection is granted solely to the name of a PDO/PGI and does not extend ipso iure to the names of sub-regions, sub-denominations, local administrative areas or localities in the area covered by that PDO/PGI. In this respect, a distinction must be made between the doctrine of the General Court in judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’ and the current legal framework. That judgment refers to a system of Member

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State competencies on the designation of geographical indications for wines that existed under previous Regulation (EC) No 1493/1999 but is no l onger in force. According to Article 67 of Commission Regulation (EC) No 607/2009 (see also Article 120(1)(g) of Regulation (EU) No 1308/2013) the names of those small geographical areas are now considered merely optional particulars on labels.

On the other hand, the trade agreements signed by the EU with third countries typically have annexed to them a list of the PDOs/PGIs registered at EU level that are also to be protected in the third countries in question (see judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’, paras 104-108 and decision of 19/06/2013, R 1546/2011-4 – ‘FONT DE LA FIGUERA’). However, examiners should not use those lists as a s ource of information about EU PDOs/PGIs but should refer to the corresponding databases cited above. Firstly, the lists of EU PDOs/PGIs to be protected abroad may vary from one agreement to another, depending on t he particularities of the negotiations. Secondly, the annexes to the agreements are usually amended and updated through an ‘Exchange of Letters’.

Article 7(1)(j) CTMR applies only in respect of PDOs/PGIs that were applied for before the CTM and are registered at the time of examining the CTM. The relevant dates for establishing the priority of a trade mark and of a PDO/PGI are the date of application of the CTM (or the so-called Paris Convention priority, if claimed) and the date of application for protection of a PDO/PGI to the Commission respectively.

Therefore, no objection will be raised under Article 7(1)(j) CTMR when the PDO/PGI was applied for after the filing date (or priority date, if applicable) of the CTM application. For wines, where there is no relevant date information in the ‘E-Bacchus’ extract, this means that the PDO/PGI in question was already in existence on 01/08/2009, the date on which the register was set up. For any PDOs/PGIs for wines added subsequently, the ‘E-Bacchus’ extract includes a reference to the publication in the Official Journal, which gives the relevant information. For spirit drinks, the initial publication of Annex III of Regulation (EC) No 110/2008 contained all PGIs for spirit drinks that existed on 20/02/2008, the date of entry into force of that regulation. For any PGIs for spirit drinks added subsequently, the corresponding amendment regulation contains the relevant information;

Notwithstanding the above, and in view of the fact that the vast majority of applications for PDO/PGI usually mature in a r egistration, an objection will be r aised when the PDO/PGI was applied for before the filing date (or the priority date, if applicable) of the CTM application but had not yet been registered at the time of examining the CTM application. However, if the CTM applicant submits that the PDO/PGI in question has not yet been registered, the proceedings will be s uspended until the outcome of the registration procedure of the PDO/PGI.

2.10.2.2 Situations covered by Article 103 of Regulation (EU) No 1308/2013 and Article 16 of Regulation (EC) No 110/2008

Article 7(1)(j) CTMR applies (provided that the other conditions also apply) in all of the following situations:

1. the CTM consists solely of a whole PDO/PGI (‘direct use’); 2. the CTM contains a w hole PDO/PGI in addition to other word or figurative

elements (‘direct or indirect use’);

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3. the CTM contains or consists of an imitation or evocation of a PDO/PGI; 4. other misleading indications and practices; 5. the reputation of PDOs/PGIs.

CTM consists solely of a whole PDO/PGI (‘direct use’)

This situation covers the ‘direct use’ of a PDO/PGI as a CTM, that is, the trade mark consists solely of the name of the PDO/PGI.

Examples

PDO/PGI Community trade mark

MADEIRA

(PDO-PT-A0038)

MADEIRA

(Collective CTM No 3 540 911)

MANZANILLA

(PDO-ES-A1482)

MANZANILLA

(Collective CTM No 1 723 345)

If the mark consists solely of the PDO/PGI, the CTM also falls under Article 7(1)(c) CTMR, since it is considered descriptive of the geographical origin of the goods in question. This means that the examiner’s objection will simultaneously raise absolute grounds for refusal under both Article 7(1)(j) and 7(1)(c) CTMR. There is an exception to this, pursuant to Article 66(2) CTMR, when the CTM is a collective trade mark and the regulations governing use thereof include the particulars foreseen in Article 67(2) (for the contrary situation, where the mark had been applied for as an individual mark, see decision of 07/03/2006, R 1073/2005-1 – ‘TEQUILA’, para. 15).

While restricting the relevant goods (to comply with the specifications of the PDO/PGI) is usually a m eans of waiving the objection under Article 7(1)(j) CTMR (see paragraph 2.9.2.3 below), such restriction is irrelevant for Article 7(1)(c) CTMR.

For example, an application for the word mark ‘Bergerac’ for wines will simultaneously be objected to under both Article 7(1)(j) and Article 7(1)(c) CTMR: it consists solely of the PDO ‘Bergerac’ and is therefore descriptive. If the goods are subsequently limited to wines complying with the specifications of the PDO ‘Bergerac’, the objection under Article 7(1)(j) CTMR will be waived but the trade mark is still descriptive and continues to be obj ectionable under Article 7(1)(c) CTMR, unless it has been app lied for as a collective trade mark that complies with Article 67(2) CTMR.

CTM contains a whole PDO/PGI in addition to other word or figurative elements (‘direct or indirect use’)

This situation also covers the ‘direct use’ of a PDO/PGI in a CTM through reproduction of the name of the PDO/PGI together with other elements.

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The following CTMs are considered to fall under Article 7(1)(j) CTMR since they contain the whole denomination of a PDO/PGI.

PDO/PGI Community trade mark

BEAUJOLAIS

(PDO-FR-A0934)

BEAUX JOURS BEAUJOLAIS

(CTM No 1 503 259)

CHAMPAGNE

(PDO-FR-A1359)

CHAMPAGNE VEUVE DEVANLAY

(CTM No 11 593 381)

BEAUJOLAIS

(PDO-FR-A0934)

(CTM No 1 561 646)

Under Article 7(1)(j) CTMR it is irrelevant whether or not the other word or figurative elements may give the trade mark distinctive character. The sign can be acceptable as a whole under Article 7(1)(b) and (c) CTMR and still be objectionable (as in the cases above) under Article 7(1)(j) CTMR.

There is ‘indirect use’ of a P DO/PGI, for example, when the PDO/PGI appears in a complex trade mark (such as the representation of a l abel) in smaller characters as information about the origin or type of the product or as part of the producer’s address. In such cases the trade mark will be obj ectionable irrespective of the position or the size of the PDO/PGI within the trade mark as a whole, provided that it is visible.

PDO/PGI Community trade mark

OPORTO

(PDO-PT-A1540)

CTMs No 11 907 334 and No 2 281 970)

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CTM contains or consists of an imitation or evocation of a PDO/PGI

Neither the CTMR nor Regulations No 1308/2013 and No 110/2008 define the meaning of ‘imitation’ or ‘evocation’. To a large extent, they are closely related concepts.

According to the Court, ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’ (judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 25 and judgment of 26/02/2008, C-132/05, para. 44).

The above means that there may be evocation when the CTM reproduces part of a PDO/PGI, such as (one of its) geographically significant word element(s) (in the sense that it is not a generic element, like ‘cabernet’ and ‘ron’ in the PDO/PGI ‘Cabernet d’Anjou’ or ‘Ron de Granada’), or even part of a word, such as a characteristic root or ending (examples are given below).

Moreover, Article 103(2)(b) of Regulation (EU) No 1308/2013 and Article 16 of Regulation (EC) No 110/2008 protect PDOs/PGIs against misuse, imitation or evocation, ‘even if the true origin of the product is indicated or if the protected name is translated or accompanied by an ex pression such as “style”, “type”, “method”, “as produced in”, “imitation” … or similar’, thus even if consumers are not misled.

According to the Advocate General (opinion of 17/12/1998, C-87/97, ‘Cambozola’, para. 33), ‘the term “evocation” is objective, so that it is not necessary to show that the owner of the mark intended to evoke the protected name’.

In this respect, and for the purposes of Article 7(1)(j) CTMR, the Office will assess in an equally objective way the situations described below, regardless of the CTM applicant’s actual intention.

Furthermore, the Office considers the terms ‘imitation’ and ‘ evocation’ as two corollaries of essentially the same concept. The mark ‘imitates’ (mimics, reproduces elements of, etc.), with the result that the product designated by the PDO/PGI is ‘evoked’ (called to mind).

In the light of the above, the Office finds that there is evocation or imitation of a PDO where:

(a) the CTM incorporates the geographically significant part (in the sense that it is not the generic element) of the PDO/PGI;

(b) the CTM contains an equivalent adjective/noun that indicates the same geographical origin;

(c) the PDO/PGI is translated; (d) the CTM includes a ‘ de-localizer’ expression in addition to the PDO/PGI or its

evocation.

The CTM incorporates part of the PDO/PGI

According to the Court (judgment of 04/03/1999, C-87/97, ‘Cambozola’, and judgment of 26/02/2008, C-132/05, cited above), the CTM must trigger in the consumer’s mind the image of the product whose designation is protected.

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The Court has also stated that ‘it is possible … for a pr otected designation to be evoked where there is no l ikelihood of confusion between the products concerned’ (judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 26).

Importantly, evocation is not assessed in the same way as likelihood of confusion (see opinion of the Advocate General of 17/12/1998, C-87/97, ‘Cambozola’, para. 37). A link must be made with the product whose designation is protected. Therefore, whether or not there is evocation will not be analysed according to the principles laid down by the CJEU in judgment of 11/11/1997, C-251/95, ‘Sabèl’.

As pointed out above, evocation is understood as encompassing not only when the CTM incorporates (one of) the geographically significant word(s) (as opposed to generic) element(s) of a PDO/PGI, but also when the CTM reproduces other parts of that PDO/PGI, such as a characteristic root or ending.

Although the following examples concern foodstuffs, they equally serve to demonstrate ‘imitation’ and ‘evocation’ for wines and spirit drinks.

PDO/PGI Trade Mark Explanation

CHIANTI CLASSICO

(IT/PDO/0005/0108)

(CTM 9 567 851)

The term ‘chianti’ evokes the PDO ‘Chianti Classico’.

(R 1474/2011-2, ‘AZIENDA OLEARIA CHIANTI’, paras 14-15)

GORGONZOLA

(IT/PDO/0017/0010) CAMBOZOLA

‘… a protected name is indeed evoked where the term used to designate that product ends in the same two syllables and contains the same number of syllables, with the result that the phonetic and visual similarity between the two names is obvious’

(C-87/97, para. 27)

If a PDO/PGI contains or evokes the name of a product that is considered generic, protection does not extend to the generic element. For example, in the PGI ‘Ron de Málaga’, it is a well-known fact that the term ‘ron’ (rum in Spanish) is generic and therefore does not deserve protection. Accordingly, no objection will be raised to the mere fact that a CTM contains a generic term that is part of a PDO/PGI.

Where the generic nature of an element in a PDO/PGI can be determined by standard dictionary definitions, the perspective of the public in the country of origin of the PDO/PGI is determinative. For instance, in the examples cited above, it suffices that the term ‘ron’ is generic for Spanish consumers for it to be concluded that it is generic, regardless of whether or not it can be understood by other parts of the public in the European Union.

By contrast, where no definition can be found in a standard, well-known dictionary, the generic nature of the term in question should be assessed following the criteria laid

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down by the Court (see judgment of 26/02/2008, C-132/05 and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’), such as relevant national and EU legislation, how the term is perceived by the public, and circumstances relating to the marketing of the product in question.

Finally, in some cases a CTM may constitute direct/indirect use or evocation of more than one PDO/PGI at the same time. This is likely to happen when the CTM contains an element (not being a generic one) that appears in more than one PDO/PGI.

PDO/PGI RIOJA (PDO-ES-A0117)

SANTIAGO (Chilean PGI)

Community trade mark RIOJA SANTIAGO

Explanation

The trade mark applied for consists of the terms ‘RIOJA’ and ‘SANTIAGO’, each of which coincides with a protected designation of origin for wines, the former (‘RIOJA’) being protected by the European Union and t he latter (‘SANTIAGO’), a geogr aphical indication for a wine originating from Chile, being protected under a bilateral agreement between the European Union and the Republic of Chile (…)

It is not possible to accept any limitation that includes ‘wine’ originating from the territory of one of the two designations of origin since such a limitation automatically excludes wines originating from the other designation of origin, which inevitably means that the trade mark applied for will lead to confusion. By the same token, a hypothetical limitation of the list of goods to wine from the geographical area covered by either of the designations of origin, e.g. ‘wines from the Rioja designation of origin and w ines from the Santiago designation of origin’, in Class 33, would be c overed by the prohibition of Article 7(1)(j) CTMR insofar as the trade mark would inevitably – and confusingly – identify wines with a geographical origin other than that of the respective designations of origin included under the trade mark. Preventing such an eventuality is the principal purpose of that Article.

(R 0053/2010-2, ‘RIOJA SANTIAGO’)

Provided that the CTM covers the relevant goods, an objection should be raised in respect of all the PDOs/PGIs concerned. However, the examiner will indicate that the objection cannot be overcome, because limiting the goods to those that comply with either one of or all of the PDOs/PGIs would necessarily trigger another objection under Article 7(1)(j) CTMR since such a l imitation would inevitably and c onfusingly identify wines with a geographical origin other than that of the PDO/PGI in question.

Equivalent adjectives/nouns

The use of an e quivalent adjective/noun to indicate the same origin constitutes an evocation of a PDO/PGI.

PDO/PGI Community trade mark(invented examples) Explanation

IBIZA

(PGI-ES-A0110) IBICENCO Noun in the PDO → Adjective in the CTM

AÇORES AÇORIANO Noun in the PDO → Adjective in the CTM

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(PGI-PT-A1447)

BORDEAUX

(PDO-FR-A0821) BORDELAIS Noun in the PDO → Adjective in the CTM

Translated PDOs/PGIs

Likewise, there is evocation or imitation of the PDO/PGI when the CTM contains or consists of a translation of the whole or part of a PDO/PGI in any of the EU languages.

PDO/PGI Community trade mark Explanation

COGNAC KONJAKKI(invented example) A CTM that contains the term ‘Konjakki’ will be considered to evoke ‘Cognac’ in Finnish.

BOURGOGNE

CTM 2417269

‘Borgoña’ is the Spanish translation of the French PDO ‘Bourgogne’

Trade marks consisting of these terms must be refused under both Article 7(1)(j) and 7(1)(c) CTMR rather than solely under Article 7(1)(c) CTMR.

Expressions used as ‘de-localisers’

According to Article 103(2)(b) of Regulation (EU) No 1308/2013 and Article 16(b) of Regulation (EC) No 110/2008, PDOs/PGIs are protected ‘even if the true origin of the product … is indicated or if the protected name is … accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” … or similar’.

Therefore, the fact that the PDO/PGI reproduced or evoked in the CTM is accompanied by these expressions does not militate against the application of Article 7(1)(j) CTMR. In other words, even if the public is thereby informed about the actual origin of the product, an objection will still be raised under Article 7(1)(j) CTMR. Notwithstanding this, the trade mark will be m isleading under Article 7(1)(g) CTMR since there is a contradiction between the goods (restricted to the specific PDO/PGI) and the message conveyed by the mark (that the goods are not ‘genuine’ PDO/PGI products), which will thus necessarily lead to a further objection under that Article.

PDO/PGI Community trade mark (invented examples)

Explanation

RIOJA

(PDO-ES-A0117) RIOJA STYLE RED WINE

A CTM that contains an expression such as ‘Rioja Style Red Wine’ will be considered to evoke the PDO ‘Rioja’ even if it conveys the idea that the product in question is not a ‘genuine’ PDO Rioja wine.

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Where the applicant has its legal seat is irrelevant for assessing Article 7(1)(j) CTMR. Article 103(1) of Regulation (EU) No 1308/2013 sets out that protected designations of origin and protected geographical indications may be used by any operator marketing a product that conforms to the corresponding specification. Hence, provided that the goods comply with the specification of the PDO/PGI in question (which is guaranteed by restricting the goods appropriately), the location of the applicant’s legal seat as indicated in the CTM application is irrelevant. For example, a company with legal domicile in Poland can own a vineyard located in Spain that produces wine complying with the product specification of the PDO ‘Ribera del Duero’.

Other misleading indications and practices

Article 103(2)(c) and (d) of Regulation (EU) No 1308/2013 and Article 16(c) and (d) of Regulation (EC) No 110/2008 protect the PDO/PGI against a nu mber of false or misleading indications about the origin, nature or essential qualities of the product.

Although it very much depends on the particularities of each case, each of which must therefore be as sessed individually, a C TM may be c onsidered misleading when, for example, it contains figurative elements that are typically associated with the geographical area in question (such as well-known historical monuments).

The above must be interpreted in a restrictive way: it refers solely to CTMs that depict a well-known and s ingular image that is generally taken as a s ymbol of the particular place of origin of the products covered by the PDO/PGI.

PDO/PGI Community trade mark(invented examples) Explanation

PORTO

(PDO-PT-A1540)

CTM depicting the ‘Dom Luís I Bridge’

in the city of Porto

A picture of the Dom Luís I Bridge and its riverside is a well-known emblem of the city of Porto. Use of this image for wines other than those covered by the PDO ‘Porto’ would fall under Article 103(2)(c) and (d) of Regulation (EU) No 1308/2013.

Given the inherent difficulty in identifying evocative figurative elements, particularly in less obvious cases, the Office will in such cases rely principally on objections by third parties.

The reputation of PDOs/PGIs

According to Article 103(2)(a) of Regulation (EU) No 1308/2013 and Article 16(a) of Regulation (EC) No 110/2008, registered names are protected against use that exploits the reputation of the protected name. This protection extends even to different products (see by analogy judgment of 12/06/2007, joined cases T-53/04 to T-56/04, T-58/04 and T-59/04, ‘Budweiser’, para. 176).

However, the scope of such protection must be read in line with the mandate contained in Article 102 of Regulation (EU) No 1308/2013, which limits the refusal of trade marks to products listed in its Annex VII, Part II.

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Therefore, the Office considers that, in the context of examining absolute grounds for refusal, the PDO/PGI’s protection is limited to identical or comparable products.

However, the extended scope of protection of a PDO/PGI with reputation can be invoked in the context of Article 8(4) CTMR (see the Guidelines, Part C, Opposition, Section 4, Rights Under Article 8(4) CTMR).

2.10.2.3 Relevant goods

Comparable products

Objections based on A rticle 7(1)(j) CTMR can be raised only in respect of specific goods of the CTM application, namely those that are identical or ‘comparable’ to ones covered by the PDO/PGI.

The different terms used in Articles 102(1) and 103(2) of Regulation (EU) No 1308/2013 (‘product falling under one of the categories listed in Part II of Annex VII’ and ‘comparable products’ respectively) are interpreted by the Office as synonyms referring to the same concept.

For ease of reference, the categories listed in Part II of Annex VII can be grouped in: (i) wine; (ii) sparkling wine; (iii) grape must; (iv) wine vinegar.

The notion of comparable goods must be understood restrictively and i t is independent of the analysis of similarity between goods in trade mark law. Accordingly, the criteria set out in judgment of 29/09/1998, C-39/97, ‘Canon’, should not necessarily be adhered to, although some of them may be us eful. For example, given that a PDO/PGI serves to indicate the geographical origin and the particular qualities of a product, criteria such as the nature of the product or its composition are more relevant than, for instance, whether or not goods are complementary.

In particular, the CJEU (in judgment of 14/07/2011, joined cases C-4/10 and C-27/10, ‘BNI Cognac’, para. 54) has listed the following criteria for determining whether goods are comparable:

• whether or not they have common objective characteristics (such as method of elaboration, physical appearance of the product or use of the same raw materials);

• whether or not they are consumed, from the point of view of the relevant public, on largely identical occasions;

• whether or not they are distributed through the same channels and s ubject to similar marketing rules.

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Although it is not possible in these Guidelines to list all the possible scenarios, the following are some examples of comparable products.

Products covered by the PDO/PGI Comparable products

Wine All types of wines (including sparkling wine); grape must; wine vinegar; wine-based beverages (e.g. ‘sangría’)

Spirits All types of spirits; spirit-based drinks

Restrictions of the list of goods

According to Article 103(1) of Regulation (EU) No 1308/2013, protected designations of origin and protected geographical indications may be used by any operator marketing a wine conforming to the corresponding specification.

Objections raised under Article 7(1)(j) CTMR may be waived if the relevant goods are restricted to comply with the specifications of the PDO/PGI in question.

Restriction of goods can be a complex task, which may depend to a large extent on a case-by-case examination.

• Products of the same type as those covered by the PDO/PGI must be restricted in order to meet the specifications of the PDO/PGI. The proper wording is ‘[name of the product] complying with the specifications of the [PDO/PGI ‘X’]’. No other wording should be proposed or allowed. Restrictions such as ‘[name of the product] with the [PDO/PGI ‘X’]’ or ‘[name of the product] originating in [name of a place]’ are not acceptable.

PDO/PGI in the Community trade mark Acceptable list of goods

Slovácká

(PDO-CZ-A0890)

Wine complying with the specifications of the PDO ‘Slovácká’

• The category of products that includes those covered by the PDO/PGI should be restricted to designate ‘wines’ that comply with the specifications of the PDO/PGI. For spirit drinks, the restriction should designate the exact category of product (e.g. ‘whisky’, ‘rum’, ‘fruit spirit’, in accordance with Annex III of Regulation (EC) No 110/2008) that complies with the specifications of the PDO/PGI.

PDO/PGI in the Community trade mark

Original specification (not acceptable)

Acceptable list of goods Explanation

TOKAJI

(PDO-HU-A1254) Wines

Wine complying with the specifications of the PDO ‘Tokaji’

The CTM can be accepted only for wine covered by the PDO

• Comparable products are restricted to those products, within the category of comparable products, covered by the PDO/PGI.

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PDO/PGI in the Community trade mark

Original specification (not acceptable)

Acceptable list of goods Explanation

MOSLAVINA

(PDO-HR-A1653)

Alcoholic beverages (except beers)

Wine complying with the specifications of the PDO ‘Moslavina’; alcoholic beverages other than wines

The CTM can be accepted only for wine covered by the PDO, and for alcoholic beverages other than wines.

There may be c ases where the objection cannot be ov ercome by a l imitation, for example when the goods applied for, although ‘comparable’, do not include the product covered by the PDO/PGI (e.g. where the PGI covers ‘whisky’ and the goods applied for are ‘rum’).

2.10.3 PDOs/PGIs not protected under Regulations (EC) No 1308/2013 and No 110/2008

2.10.3.1 PDOs/PGIs protected at national level in an EU Member State

The Court of Justice has set out (judgment of 08/09/2009, C-478/07, ‘Bud’) that the EU system of protection for PDOs/PGIs for agricultural products and foodstuffs laid down in Regulation (EC) No 510/2006 [then in effect] is ‘exhaustive in nature’. The Office applies an analogous approach for PDOs/PGIs for wines and spirits, for the following reasons.

The former protection at national level of geographical indications for wines and spirit drinks that now qualify for a PDO/PGI under Regulation (EU) No 1308/2013 and Regulation (EC) No 110/2008 respectively was discontinued once those geographical indications were registered at EU level (see Article 107 of Regulation (EU) No 1308/2013 and Articles 15(2), 20(1) of Regulation (EC) No 110/2008).

Geographical indications for wines that now qualify for a P DO/PGI under Regulation (EU) No 1308/2013 and in the past enjoyed protection by means of national legislation do not fall within the scope of Article 7(1)(j) CTMR. Accordingly, they do not constitute as such, and for that reason alone, a ground for refusal under Article 7(1)(j) CTMR, unless they have also been r egistered at EU level. Therefore, if for example a t hird party argues that a CTM contains or consists of a geographical indication for wines that was registered in the past at national level in an EU Member State, the examiner will check whether such geographical indication is also registered at EU level as a PDO/PGI. If not, the third party observations will be deemed not to raise serious doubts as regards Article 7(1)(j) CTMR.

2.10.3.2 PDOs/PGIs from third countries

The following situations refer to PDOs/PGIs from third countries that are not simultaneously registered at EU level.

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The geographical indication is protected only in the country of origin under national legislation

Article 7(1)(j) CTMR does not apply since the third-country geographical indication is not recognised and protected expressis verbis under EU legislation. In this respect, note that the provisions of the TRIPs Agreement are not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 44).

Nevertheless, when the CTM contains or consists of one such protected geographical indication, it must also be assessed whether or not the CTM may be considered descriptive and/or deceptive under Article 7(1)(c) and (g) CTMR in accordance with the general rules set out in these Guidelines. For example, where a third party observes that a CTM consists of the term ‘Murakami’ (invented example), which is a PGI for spirits in accordance with the national legislation of country X, Article 7(1)(j) CTMR will not apply for the reasons set out above, but it must be examined whether or not the CTM will be per ceived as a des criptive and/or deceptive sign by the relevant EU consumers.

The geographical indication is protected under an agreement to which the European Union is a contracting party

The EU has signed a number of trade agreements with third countries that protect geographical indications. These instruments typically include a list of the geographical indications, as well as provisions on their conflicts with trade marks. The content and degree of precision may nevertheless vary from one agr eement to another. Geographical indications from third countries are protected at EU level after the relevant agreement has entered into force.

In this respect, it is settled case-law that a provision of an agreement entered into by the EU with non-member countries must be r egarded as being directly applicable when, in view of the wording, purpose and nat ure of the agreement, it may be concluded that the provision contains a clear, precise and unconditional obligation that is not subject, in its implementation or effects, to the adoption of any subsequent measure (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 42).

The scope of protection given to these PGIs by third countries is defined through the substantive provisions of the agreement concerned. While the oldest agreements usually contained only general provisions, the ‘last generation’ of free trade agreements refer to the relationship between trade marks and PGIs in similar terms to Articles 102 and 103 of Regulation (EU) No 1308/2013 (see, for example, Articles 210 and 211 of the ‘Trade Agreement between the European Union and its Member States, of the one part, and Colombia and Peru, of the other part’, OJ L 354, 21/12/2012).

In the light of this, CTMs that contain or consist of a third-country PDO/PGI that is protected by an agreement to which the EU is a contracting party (and is not simultaneously registered under Regulation (EU) No 1308/2013) are examined, on a case-by-case basis, in accordance with the specific substantive provisions of the agreement in question on the refusal of conflicting trade marks, taking into account the case-law cited above. The mere fact that a PDO/PGI from a third country is protected by those instruments does not automatically imply that a CTM that contains or consists

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of the PDO/PGI must be refused: this will depend on t he content and scope of the agreement’s relevant provisions.

The geographical indication is protected under an international agreement signed only by Member States

Protection of geographical indications under agreements between two Member States is precluded under current EU regulation of PDOs/PGIs (see the doctrine in judgment of 08/09/2009, C-478/07, ‘Bud’, applied by the Office by analogy for PDOs/PGIs for wines and spirits). Such agreements are redundant and have no legal effect.

As regards international agreements signed exclusively by Member States with third countries (in particular, the Lisbon Agreement for the Protection of Appellations of Provenance and t heir International Registration), and for the sole purpose of the examination of absolute grounds for refusal, the EU is not a contracting party to these agreements, and they do not impose any obligations on the EU (see, by analogy, judgment of 14/10/1980, 812/79, para. 9).

2.11 Article 7(1)(k) CTMR

2.11.1 Introduction

Article 7(1)(k) CTMR applies to CTMs that are in conflict with protected designations of origin/protected geographical indications (PDOs/PGIs) for agricultural products and foodstuffs registered at EU level.

More specifically, it provides for the refusal of CTMs that contain or consist of a PDO/PGI for agricultural products and foodstuffs that has been registered under Regulation (EU) No 1151/20125, provided that the situation corresponds to one covered in that regulation.

According to Regulation (EU) No 1151/2012, PDOs/PGIs cover products for which there is an i ntrinsic link between the product or foodstuff characteristics and i ts geographical origin.

More particularly:

A ‘designation of origin’ is a name that identifies a product:

1. originating in a specific place, region or, in exceptional cases, a country; 2. whose quality or characteristics are essentially or exclusively due to a particular

geographical environment with its inherent natural and human factors; and 3. the production steps of which all take place in the defined geographical area.

A ‘geographical indication’ is a name that identifies a product:

1. originating in a specific place, region or country;

5 Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and f oodstuffs. It replaced and repealed Regulation (EC) No 510/2006.

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2. whose given quality, reputation or other characteristic is essentially attributable to its geographical origin; and

3. of which at least one of the production steps takes place in the defined geographical area.

PDO is the term used to describe foodstuffs that are produced, processed and prepared in a given geographical area using recognised know-how. A PGI indicates a link with the area in at least one of the stages of production, processing or preparation. PDOs therefore have a stronger link with the area.

This distinction, however, does not affect the scope of protection, which is the same for both PDOs and PGIs. In other words, Article 7(1)(k) CTMR applies indiscriminately to the designations covered by Regulation (EU) No 1151/2012, regardless of whether they are registered as PDOs or as PGIs.

Protection is granted to PDOs/PGIs with the aim of ensuring that they are used fairly and in order to prevent practices liable to mislead consumers (see Recital 29 of Regulation (EU) No 1151/2012).

In this respect, it must also be underlined that the concepts of PDO and PGI differ from ‘simple indications of geographical provenance’. For the latter, there is no direct link between a s pecific quality, reputation or other characteristic of the product and i ts specific geographical origin, with the result that it does not come within the scope of Article 5(2) of Regulation (EU) No 1151/2012 (judgment of 07/11/2000, C-312/98 ‘Haus Cramer’, paras 43 and 44). For example, ‘Queso Manchego’ is a PDO for cheese since it designates a product with particular characteristics that comply with the definition of a PDO. However, ‘Queso de Alicante’ (a ‘simple geographical indication’) cannot qualify for a PDO/PGI since it does not enjoy such characteristics and requirements.

According to Article 14(1) of Regulation (EU) No 1151/2012,

where a des ignation of origin or a g eographical indication is registered under this Regulation, the registration of a trade mark the use of which would contravene Article 13(1) and which relates to a product of the same type shall be refused if the application for registration of the trade mark is submitted after the date of submission of the registration application in respect of the designation of origin or the geographical indication to the Commission.

Article 13(1) of Regulation (EU) No 1151/2012 sets out the situations that infringe the rights deriving from a PDO/PGI: (i) direct or indirect commercial use of the PDO/PGI; (ii) misuse, imitation or evocation; (iii) false or misleading practices in the packaging or information on the product and (iv) other misleading practices.

Three cumulative conditions are necessary in order for Article 7(1)(k) CTMR to apply:

• The PDO/PGI in question must be registered at EU level under the procedure laid down in Regulation (EU) No 1151/2012 (see paragraph 2.10.2.1 below);

• Use of the CTM that consists of or contains a PDO/PGI for agricultural products and foodstuffs must constitute one of the situations provided for in Article 13(1) of Regulation (EU) No 1151/2012 (see paragraph 2.10.2.2 below);

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• The CTM application must include goods that are identical or ‘comparable’ to the goods covered by the PDO/PGI (see paragraph 2.10.2.3 below).

For these three conditions, reference is made below to: (i) which PDOs/PGIs may give rise to an objection under Article 7(1)(k) CTMR; (ii) under what circumstances a CTM contains or consists of a PDO/PGI in such a way that it falls under Article 13(1) of Regulation (EU) No 1151/2012; (iii) the goods of the CTM application affected by the protection granted to the PDO/PGI. Finally, reference is also made below to how goods can be restricted in order to waive an objection.

2.11.2 The application of Article 7(1)(k) CTMR

2.11.2.1 Relevant PDOs/PGIs

Article 7(1)(k) CTMR applies where PDOs/PGIs (either from an EU Member State or from a t hird country) have been r egistered under the procedure laid down by Regulation (EU) No 1151/2012.

For third-country PDOs/PGIs that enjoy protection in the European Union through international agreements concluded between the European Union and third countries, see paragraph 2.10.3.2 below.

Relevant information about PDOs/PGIs registered under Regulation (EU) No 1151/2012 can be found in the database ‘DOOR’ maintained by the Commission, which can be accessed through the internet at http://ec.europa.eu/agriculture/quality/do or/list.html.

Protection is granted solely to the name of a PDO/PGI as registered (see Article 13(1) of Regulation (EU) No 1151/2012) and does not extend ipso iure to the names of sub- regions, sub-denominations, local administrative areas or localities in the area covered by that PDO/PGI. In this respect, a distinction must be made between the doctrine of the General Court in judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’ and the current legal framework. That judgment refers to a system of Member State competencies on t he designation of geographical indications for wines that existed under previous Regulation (EC) No 1493/1999 but is no longer in force.

On the other hand, the trade agreements signed by the EU with third countries typically have annexed to them a list of the PDOs/PGIs registered at EU level that are also to be protected in the third countries in question (see judgment of 11/05/2010, T-237/08, ‘Cuvée Palomar’, paras 104-108 and decision of 19/06/2013, R 1546/2011-4 – ‘FONT DE LA FIGUERA’). However, examiners should not use those lists as a s ource of information about EU PDOs/PGIs but should refer to the database cited above. Firstly, the lists of EU PDOs/PGIs to be pr otected abroad may vary from one agreement to another, depending on the particularities of the negotiations. Secondly, the annexes to the agreements are usually amended and updated through an ‘Exchange of Letters’.

Article 7(1)(k) CTMR applies only in respect of PDOs/PGIs that were applied for before the CTM and are registered at the time of examining the CTM. The relevant dates for establishing the priority of a trade mark and of a PDO/PGI are the date of application of the CTM (or the so-called Paris Convention priority, if claimed) and the date of application for protection of a PDO/PGI to the Commission respectively.

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Therefore, no objection will be raised under Article 7(1)(k) CTMR when the PDO/PGI was applied for after the filing date (or the priority date, if applicable) of the CTM application. Details of the date of application for the PDO/PGI are available in the ‘DOOR’ database.

Notwithstanding the above, and in view of the fact that the vast majority of applications for PDO/PGI usually mature in a r egistration, an objection will be r aised when the PDO/PGI was applied for before the filing date (or the priority date, if applicable) of the CTM application but had not yet been registered at the time of examining the CTM application. However, if the CTM applicant submits that the PDO/PGI in question has not yet been registered, the proceedings will be s uspended until the outcome of the registration procedure of the PDO/PGI

2.11.2.2 Situations covered by Article 13(1) of Regulation (EU) No 1151/2012

Article 7(1)(k) CTMR applies (provided that the other conditions also apply) in all of the following situations:

1. the CTM consists solely of a whole PDO/PGI (‘direct use’); 2. the CTM contains a w hole PDO/PGI in addition to other word or figurative

elements (‘direct or indirect use’); 3. the CTM contains or consists of an imitation or evocation of a PDO/PGI; 4. other misleading indications and practices; 5. the reputation of PDOs/PGIs

CTM consists solely of a whole PDO/PGI (‘direct use’)

This situation covers the ‘direct use’ of a PDO/PGI as a CTM, that is, the trade mark consists solely of the name of the PDO/PGI.

Examples

PDO/PGI Community trade mark

DRESDNER CHRISTSTOLLEN (DE/PGI/005/0704)

DRESDNER CHRISTSTOLLEN (Collective CTM No 262 949)

PROSCIUTTO DI PARMA (IT/PDO/0117/0067)

PROSCIUTTO DI PARMA (Collective CTM No 1 116 458)

If the mark consists solely of the PDO/PGI, the CTM also falls under Article 7(1)(c) CTMR, since it is considered descriptive of the geographical origin of the goods in question. This means that the examiner’s objection will simultaneously raise absolute grounds for refusal under both Article 7(1)(k) and 7(1)(c) CTMR. There is an exception to this, pursuant to Article 66(2) CTMR, when the CTM is a collective trade mark and the regulations governing use thereof include the particulars foreseen in Article 67(2) (for the contrary situation where the mark had been applied for as an individual mark, see decision of 07/03/2006, R 1073/2005-1, ‘TEQUILA’, para. 15).

While restricting the relevant goods (to comply with the specifications of the PDO/PGI) is usually a m eans of waiving the objection under Article 7(1)(k) CTMR (see paragraph 2.10.2.3 below), such restriction is irrelevant for Article 7(1)(c) CTMR.

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For example, a CTM consisting of the expression ‘PROSCIUTTO DI PARMA’ for meat will simultaneously be objected to under both Article 7(1)(k) and Article 7(1)(c) CTMR: it consists solely of the PDO ‘Prosciutto di Parma’, which enjoys protection for meat products, namely a specific type of ham, and is therefore descriptive. If the goods are subsequently limited to ham complying with the specifications of the PDO ‘Prosciutto di Parma’, the objection under Article 7(1)(k) CTMR will be waived but the trade mark is still descriptive and continues to be objectionable under Article 7(1)(c) CTMR, unless it has been applied for as a collective trade mark that complies with Article 67(2) CTMR.

CTM contains a whole PDO/PGI in addition to other word or figurative elements (‘direct or indirect use’)

This situation also covers the ‘direct use’ of a PDO/PGI in a CTM through reproduction of the name of the PDO/PGI together with other elements.

The following CTMs are considered to fall under Article 7(1)(k) CTMR since they contain the whole denomination of a PDO/PGI:

PDO/PGI Community trade mark

PROSCIUTTO DI PARMA

(IT/PDO/0117/0067)

CONSORZIO DEL PROSCIUTTO DI PARMA

(CTM No 6 380 141)

DRESDNER CHRISTSTOLLEN

(DE/PGI/005/0704)

(CTM No 5 966 668)

PARMIGIANO REGGIANO

(IT/PDO/0117/0016)

(CTM No 6 380 141)

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PDO/PGI Community trade mark

WELSH BEEF

(UK/PGI/0005/0057)

(CTM No 10 513 729)

Under Article 7(1)(k) CTMR it is irrelevant whether or not the other word or figurative elements may give the trade mark distinctive character. The sign can be acceptable as a whole under Article 7(1)(b) and (c) CTMR and still be objectionable (as in the cases above) under Article 7(1)(k) CTMR.

There is ‘indirect use’ of a P DO/PGI, for example, when the PDO/PGI appears in a complex trade mark (such as the representation of a l abel) in smaller characters as information about the origin or type of the product or as part of the producer’s address. In such cases the trade mark will be obj ectionable irrespective of the position or the size of the PDO/PGI within the trade mark as a whole, provided that it is visible.

PDO/PGI Community trade mark

WELSH LAMB

(UK/PGI/0005/0081)

(CTM No 11 927 472)

QUESO MANCHEGO

(ES/PDO/0117/0087)

(CTM No 5 582 267)

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CTM contains or consists of an imitation or evocation of a PDO/PGI

Neither the CTMR nor Regulation (EU) No 1151/2012 defines the meaning of ‘imitation’ or ‘evocation’. To a large extent, they are closely related concepts.

According to the Court, ‘evocation’ covers ‘a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’ (judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 25 and judgment of 26/02/2008, C-132/05, para. 44).

The above means that there may be evocation when the CTM reproduces part of a PDO/PGI, such as (one of its) geographically significant word element(s) (in the sense that it is not a generic element), or even part of a word, such as a characteristic root or ending (examples are given below).

Moreover, Article 13(1)(b) of Regulation (EU) No 1151/2012 protects PDOs/PGIs against ‘any misuse, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by an expression such as “ style”, “type”, “method”, “as produced in”, “imitation” or similar’ (emphasis added), thus even if consumers are not misled.

According to the Advocate General (opinion of 17/12/1998, C-87/97, ‘Cambozola’, para. 33), ‘the term “evocation” is objective, so that it is not necessary to show that the owner of the mark intended to evoke the protected name’.

In this respect, and for the purposes of Article 7(1)(k) CTMR, the Office will assess in an equally objective way the situations described below, regardless of the CTM applicant’s actual intention.

Furthermore, the Office considers the terms ‘imitation’ and ‘ evocation’ as two corollaries of essentially the same concept. The mark ‘imitates’ (mimics, reproduces elements of, etc.), with the result that the goods designated by the PDO/PGI are ‘evoked’ (called to mind).

In the light of the above, there is evocation or imitation of a PDO/PGI where:

(a) the CTM incorporates the geographically significant part (in the sense that it is not the generic element) of the PDO/PGI;

(b) the CTM contains an equivalent adjective/noun that indicates the same geographical origin;

(c) the PDO/PGI is translated; (d) the CTM includes a ‘ de-localizer’ expression in addition to the PDO/PGI or its

evocation.

The CTM incorporates part of the PDO/PGI

According to the Court (judgment of 04/03/1999, C-87/97, Cambozola’ and judgment of 26/02/2008, C-132/05, cited above), the CTM must trigger in the consumer’s mind the image of the product whose designation is protected.

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The Court has also stated that ‘it is possible (…) for a protected designation to be evoked where there is no l ikelihood of confusion between the products concerned’ (judgment of 04/03/1999, C-87/97, Cambozola’, para. 26).

Importantly, evocation is not assessed in the same way as likelihood of confusion (see opinion of the Advocate General of 17/12/1998, C-87/97, ‘Cambozola’, para. 37). A link must be made with the product whose designation is protected. Therefore, whether or not there is evocation will not be analysed according to the principles laid down by the CJEU in judgment of 11/11/1997, C-251/95, ‘Sabèl’.

As pointed out above, evocation is understood as encompassing not only when the CTM incorporates (one of) the geographically significant word(s) (as opposed to generic) element(s) of a PDO/PGI, but also when the CTM reproduces other parts of that PDO/PGI, such as a characteristic root or ending.

PDO/PGI Trade Mark Explanation

CHIANTI CLASSICO

(IT/PDO/0005/0108)

(CTM No 9 567 851)

The term ‘chianti’ is an evocation of the PDO ‘Chianti Classico’

(R 1474/2011-2, ‘AZIENDA OLEARIA CHIANTI, paras 14-15)

GORGONZOLA

(IT/PDO/0017/0010) CAMBOZOLA

‘… a protected name is indeed evoked where the term used to designate that product ends in the same two syllables and contains the same number of syllables, with the result that the phonetic and visual similarity between the two names is obvious’

(C-87/97, para. 27)

NÜRNBERGER BRATWÜRSTE/NÜRNBERGER

ROSTBRATWÜRSTE

(DE/PGI/0005/0184)

NUERNBERGA

(CTM No 9 691 577)

‘due to the phonetic equivalence, NUERNBERGA is understood in the sense of the geographical indication Nürnberger’

(R 1331/2011-4, ‘NUERNBERGA’, para. 12)

If a P DO/PGI contains or evokes the name of a product that is considered generic, protection does not extend to the generic element (see Article 13(1) of Regulation (EU) No 1151/2012, in fine and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’, paras 58 and 60). For example, in the PGIs ‘Maçã de Alcobaça’ and ‘Jambon d'Ardenne’, it is a well-known fact that the terms ‘maçã’ (apple in Portuguese) and ‘ jambon’ (ham in French) are generic and therefore they do not deserve protection. Accordingly, no objection will be raised to the mere fact that a CTM contains those generic terms that are part of a PDO/PGI.

In particular, it must also be m entioned that the terms ‘camembert’ and ‘brie’ are generic (see judgment of 26/02/2008, C-132/05, para. 36). Other examples are ‘cheddar’ or ‘gouda’ (see Regulation (EC) No 1107/96, footnotes to the PDOs ‘West

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Country farmhouse Cheddar’ and ‘ Noord-Hollandse Gouda’). Therefore, no obj ection was raised in the following case:

PDO/PGI Community trade mark

(none, because ‘camembert’ is not a geographical indication, but a generic term)

(CTM No 7 389 158)

Where the generic nature of an element in a PDO/PGI can be determined by standard dictionary definitions, the perspective of the public in the country of origin of the PDO/PGI is determinative. For instance, in the examples cited above, it suffices that the terms ‘maçã’ and ‘jambon’ are generic for the Portuguese and French consumers, respectively, for it to be concluded that they are generic, regardless of whether or not these terms can be understood by other parts of the public in the European Union.

By contrast, where no definition can be found in a standard, well-known dictionary, the generic nature of the term in question should be assessed following the criteria laid down by the Court (see judgment of 26/02/2008, C-132/05 and judgment of 12/09/2007, T-291/03, ‘Grana Biraghi’), such as relevant national and EU legislation, how the term is perceived by the public, and circumstances relating to the marketing of the product in question.

Finally, in some cases a CTM may constitute direct/indirect use or evocation of more than one PDO/PGI at the same time. This is likely to happen when the CTM contains an element (not being a generic one) that appears in more than one PDO/PGI.

PDO/PGI Community trade mark Explanation

Amarene Brusche di Modena

(CTM No 11 338 779)

The CTM contains the element ‘MODENA’ which evokes all PDOs/PGIs which include ‘MODENA’

Aceto Balsamico di Modena

Aceto balsamico tradizionale di Modena

Cotechino Modena

Zampone Modena

Prosciutto di Modena

Provided that the CTM covers the relevant goods, an objection should be raised in respect of all the PDOs/PGIs concerned. However, the examiner will indicate that the objection cannot be overcome, because limiting the goods to those that comply with either one or all PDOs/PGIs would necessarily trigger another objection under Article 7(1)(k) CTMR since such a l imitation would inevitably and confusingly identify goods with a geographical origin other than that of the PDO/PGI in question.

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Equivalent adjectives/nouns

The use of an e quivalent adjective/noun to indicate the same origin constitutes an evocation of a PDO/PGI:

PDO/PGI Community trade mark(invented examples) Explanation

JAGNIĘCINA PODHALAŃSKA

(PL/PGI/0005/00837)

JAGNIĘCINA Z PODHALA Adjective in the PGI → Noun in the CTM

MEL DO ALENTEJO

(PT/PDO/0017/0252) MEL ALENTEJANA Noun in the PDO → Adjective in the CTM

SCOTTISH WILD SALMON

(GB/PGI/0005/00863)

WILD SALMON FROM SCOTLAND Adjective in the PGI → Noun in the CTM

Translated PDOs/PGIs

Likewise, there is evocation or imitation of the PDO/PGI when the CTM contains or consists of a translation of the whole or part of a PDO/PGI in any of the EU languages.

PDO/PGI Community trade mark(invented example) Explanation

PÂTES D'ALSACE

(FR/PGI/0005/0324) ALSATIAN PASTA

A CTM that contains the expression ‘Alsatian Pasta’ will be considered to evoke the PGI ‘Pâtes d'Alsace’

Trade marks consisting of these terms must be refused under both Article 7(1)(k) and 7(1)(c) CTMR rather than solely under Article 7(1)(c) CTMR.

Expressions used as ‘de-localisers’

According to Article 13(1)(b) of Regulation (EU) No 1151/2012, PDOs/PGIs are protected even ‘if the true origin of the products or services is indicated or if the protected name is (…) accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” … or similar’.

Therefore, the fact that the PDO/PGI reproduced or evoked in the CTM is accompanied by these expressions does not militate against the application of Article 7(1)(k) CTMR. In other words, even if the public is thereby informed about the actual origin of the product, an obj ection will still be raised under Article 7(1)(k) CTMR. Notwithstanding this, the trade mark will be m isleading under Article 7(1)(g) CTMR since there is a contradiction between the goods (restricted to the specific PDO/PGI) and the message conveyed by the mark (that the goods are not ‘genuine’ PDO/PGI products), which will thus necessarily lead to a further objection under that Article 7.

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PDO/PGI Community trade mark(invented examples) Explanation

FETA

(EL/PDO/0017/0427)

GREEK STYLE PLAIN FETA

ARABIAN FETA

A CTM that contains expressions such as ‘Greek Style Plain Feta’ or ‘Arabian Feta’, will be considered to evoke the PDO ‘Feta’, even if it conveys the idea that the product in question is not a ‘genuine PDO Feta’ cheese

Where the applicant has its legal seat is irrelevant for assessing Article 7(1)(k) CTMR. Article 12(1) of Regulation (EU) No 1151/2012 sets out that protected designations of origin and protected geographical indications may be used by any operator marketing a product that conforms to the corresponding specification. Hence, provided that the goods comply with the specification of the PDO/PGI in question (which is guaranteed by restricting the goods appropriately), the location of the applicant’s legal seat as indicated in the CTM application is irrelevant. For example, a company with legal domicile in Lithuania can own a f actory located in Spain that elaborates products complying with the PGI ‘Chorizo de Cantimpalos’.

Other misleading indications and practices

Article 13(1)(c) and (d) of Regulation (EU) No 1151/2012 protects the PDO/PGI against a number of false or misleading indications about the origin, nature or essential qualities of the product.

Although it very much depends on the particularities of each case, each of which must therefore be assessed individually, a CTM may be c onsidered misleading when, for example, it contains figurative elements that are typically associated with the geographical area in question (such as well-known historical monuments) or when it reproduces a particular shape of the product.

The above must be interpreted in a restrictive way: it refers solely to CTMs that depict a well-known and s ingular image that is generally taken as a s ymbol of the particular place of origin of the products covered by the PDO/PGI or a singular shape of the product which is described in the specifications of the PDO/PGI.

PDO/PGI Community trade mark(invented examples) Explanation

MOULES DE BOUCHOT DE LA BAIE DU MONT-SAINT-

MICHEL

(FR/PDO/0005/0547)

A CTM which contains an image of the Mont-Saint-

Michel Abbey

A picture of the Mont-Saint-Michel Abbey is a w ell-known emblem of the city and island of Mont Saint Michel in Normandy. Use of this image for seafood other than that covered by the PDO ‘Moules de Bouchot de la Baie du Mont-Saint-Michel’ would fall under Article 13(1)(c) and (d) of Regulation (EU) No 1151/2012

QUESO TETILLA

(ES/PDO/0017/0088)

A CTM which depicts a cheese conical in shape

The singular shape of the product is described in the specifications of the PDO ‘Queso Tetilla’

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Given the inherent difficulty in identifying evocative figurative elements, particularly in less obvious cases, the Office will in such cases rely principally on objections by third parties.

The reputation of PDOs/PGIs

According to Article 13(1)(a) of Regulation (EU) No 1151/2012, registered names are protected against use that exploits the reputation of the protected name. This protection in principle extends even to different products (see judgment of 12/06/2007, joined cases T-53/04 to T-56/04, T-58/04 and T-59/04, ‘Budweiser’, para. 176).

However, the scope of such protection must be read in line with the mandate contained in Article 14 of the same regulation, which limits the refusal of trade marks to products ‘of the same type’.

Therefore, the Office considers that, in the context of examining absolute grounds for refusal, the PDO/PGI’s protection is limited to identical or comparable products.

However, the extended scope of protection of a PDO/PGI with reputation can be invoked in the context of Article 8(4) CTMR (see the Guidelines, Part C, Opposition, Part 4, Rights Under Article 8(4) CTMR).

2.11.2.3 Relevant goods

Comparable products

Objections based on Article 7(1)(k) CTMR can be r aised only in respect of specific goods of the CTM application, namely those that are identical or ‘comparable’ to ones covered by the PDO/PGI.

The different terms used in Articles 13 and 1 4 of Regulation (EU) No 1151/2012 (‘comparable products’, and ‘products of the same type’ respectively) are interpreted by the Office as synonyms referring to the same concept.

The notion of comparable goods must be understood restrictively and i t is independent of the analysis of similarity between goods in trade mark law. Accordingly, the criteria set out in judgment of 29/09/1998, C 39/97, ‘Canon’ should not necessarily be adhered to, although some of them may be us eful. For example, given that a PDO/PGI serves to indicate the geographical origin and the particular qualities of a product, criteria such as the nature of the product or its composition are more relevant than, for instance, whether or not goods are complementary.

In particular, the CJEU (in judgment of 14/07/2011, joined cases C-4/10 and C-27/10, ‘BNI Cognac’, para. 54) has listed the following criteria for determining whether goods are comparable:

• whether or not they have common objective characteristics (such as method of elaboration, physical appearance of the product or use of the same raw materials);

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• whether or not they are consumed, from the point of view of the relevant public, on largely identical occasions;

• whether or not they are distributed through the same channels and s ubject to similar marketing rules.

Although it is not possible in these Guidelines to list all the possible scenarios, the following are some examples of comparable products.

Products covered by the PDO/PGI Comparable products

Specific meat and specific meat preparations Any meat and any meat preparation(R 659/2012-5, p.14-17)

Milk Cheese and other milk products

Fresh fruit

Preserved, frozen, dried and cooked fruits (jellies, jams, compotes are not ‘comparable products’, but the fruit covered by the PDO/PGI can be a commercially relevant ingredient, see below under ‘Products used as ingredients’)

Fresh vegetables

Preserved, frozen, dried and cooked vegetables (jellies, jams are not ‘comparable products’, but the vegetable covered by the PDO/PGI can be a commercially relevant ingredient, see below under ‘Products used as ingredients’)

Restrictions of the list of goods

According to Article 12(1) of Regulation (EU) No 1151/2012, ‘protected designations of origin and protected geographical indications may be used by any operator marketing a product conforming to the corresponding specification’.

Objections raised under Article 7(1)(k) CTMR may be waived if the relevant goods are restricted to comply with the specifications of the PDO/PGI in question.

Restriction of goods can be a complex task, which may depend to a large extent on a case-by-case examination.

• Products of the same type as those covered by the PDO/PGI must be restricted in order to meet the specifications of the PDO/PGI. The proper wording is ‘[name of the product] complying with the specifications of the [PDO/PGI ‘X’]’. No other wording should be proposed or allowed. Restrictions such as ‘[name of the product] with the [PDO/PGI ‘X’]’ or ‘[name of the product] originating in [name of a place]’ are not acceptable.

PDO/PGI in the CTM Acceptable list of goods

WELSH BEEF

(UK/PGI/0005/0057)

Beef meat complying with the specifications of the PGI ‘Welsh Beef’’

The category of products that includes those covered by the PDO/PGI in question can be consulted in the ‘DOOR’ database. The exact product covered can be found in the

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application document attached to the publication in the Official Journal, also accessible through ‘DOOR’.

• The category of products that includes those covered by the PDO/PGI should be restricted to designate exactly the products covered by the PDO/PGI and that comply with its specifications.

PDO/PGI in the CTM Original specification(which is not acceptable) Acceptable

list of goods Explanation

WELSH BEEF

(UK/PGI/0005/0057) Meat

Beef meat complying with the

specifications of the PGI ‘Welsh Beef’

‘Meat’ includes products (e.g. pork) which cannot comply with the specifications of a particular PDO/PGI that covers the specific product ‘beef meat

POMME DU LIMOUSIN

(FR/PDO/0005/0442 Fruits

Apples complying with the

specifications of the PDO ‘Pomme du

Limousin’

The category ‘fruits’ includes products such as pearl or peaches which cannot meet the specifications of a PDO that exclusively covers apples

• Comparable products are restricted to those products, within the category of comparable products, covered by the PDO/PGI:

PDO/PGI in the CTM Original specification(which is not acceptable) Acceptable

list of goods Explanation

POMME DU LIMOUSIN

(FR/PDO/0005/0442

Preserved, frozen, dried and cooked fruits

Preserved, frozen, dried and cooked apples complying

with the specifications of the

PDO ‘Pomme du Limousin’

‘Preserved, frozen, dried and cooked fruits’ includes products made of other fruits which cannot meet the specifications of a PDO which exclusively covers apples. Also to note that the limitation should not be for ‘apples’.

There may be c ases where the objection cannot be ov ercome by a l imitation, for example, when the goods applied for, although ‘comparable’, do no t include the product covered by the PDO/PGI (e.g. where the PDO covers ‘cheese’ and the goods applied for are ‘milk’).

• Products used as i ngredients: if the goods covered by the PDO/PGI can be used as a commercially relevant ingredient (in the sense that it may determine the choice of the main product) of any of the goods included in the CTM application, a r estriction will be r equested. This is because Article 13(1)(a) and (b) of Regulation (EU) No 1151/2012 expressly extend the scope of protection of a PDO/PGI registered for a given product ‘when those products are used as an ingredient’.

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PDO/PGI in the CTM Original specification(which is not acceptable) Acceptable

list of goods Explanation

POMME DU LIMOUSIN

(FR/PDO/0005/0442) Jams and compotes

Jams and compotes of apples complying

with the specifications of the

PDO ‘Pomme du Limousin’

The fruit is the main ingredient of jams and compotes

PROSCIUTTO DI PARMA

(IT/PDO/0117/0067)

Pizzas

Pizzas with ham complying with the

specifications of the PDO ‘Prosciutto di

Parma’

This topping is the main ingredient of a pizza and the one which determines the consumer’s choice

A restriction is not necessary if the goods covered by the PDO/PGI are used as a secondary, not commercially relevant ingredient of the claimed goods.

PDO/PGI in the CTM Original specification Acceptablelist of goods Explanation

ACEITE DE LA ALCARRIA

(ES/PDO/0005/0562)

Pastry Pastry

The goods do not need to be restricted by the mere fact that oil is used in their preparation. ‘Oil’ is a secondary ingredient which is not commercially relevant

2.11.3 PDOs/PDIs not protected under Regulation (EU) No 1151/2012

2.11.3.1 PDOs/PDIs protected at national level in an EU Member State

The Court of Justice has set out (judgment of 08/09/2009, C-478/07, ‘Bud’) that the EU system of protection for PDOs/PGIs for agricultural products and foodstuffs laid down in Regulation (EC) No 510/2006 [then in effect] is ‘exhaustive in nature’.

Article 9 of Regulation (EU) No 1151/2012 states that

a Member State may, on a t ransitional basis only, grant protection to a name under that Regulation at national level, with effect from the date on which an appl ication is lodged with the Commission. Such national protection shall cease on the date on which either a decision on registration under that Regulation is taken or the application is withdrawn’. Those measures taken by Member States ‘shall produce effects at national level only, and they shall have no effect on intra-Union or international trade.

This provision is in line with Recital 24 of the same regulation, which declares that

to qualify for protection in the territories of Member States, designations of origin and geographical indications should be registered only at Union level. With effect from the date of application for such registration at Union level, Member States should be able to grant transitional protection at national level without affecting intra-Union or international trade.

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Moreover, reference must also be made to Council Regulation (EEC) No 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. That regulation (which preceded and w as repealed by Regulation (EC) No 510/2006) set out in Article 17(1) that Member States had ‘to inform the Commission which of their legally protected names (…) they wish[ed] to register’ pursuant to that regulation. Paragraph (3) added that Member States could ‘maintain national protection of the names communicated in accordance with paragraph 1 until such time as a decision on registration has been taken’ (see in this respect judgment of 04/03/1999, C-87/97, ‘Cambozola’, para. 18).

As a consequence of this, the former protection at national level of geographical indications for agricultural products and foodstuffs was discontinued once those geographical indications were registered at EU level.

Geographical indications for these kinds of products that in the past enjoyed protection by means of national legislation do not fall within the scope of Article 7(1)(k) CTMR. Accordingly, they do not constitute, as such and for that reason alone, a ground for refusal under Article 7(1)(k) CTMR, unless they have also been registered at EU level. Therefore, if for example a third party argues that a CTM contains or consists of a geographical indication for agricultural products and foodstuffs that was registered in the past at national level in an EU Member State, the examiner will check whether such geographical indication is also registered at EU level as a PDO/PGI. If not, the third party observations will be deemed not to raise serious doubts as regards Article 7(1)(k) CTMR.

2.11.3.2 PDOs/PDIs from third countries

The following situations refer to those PDOs/PGIs from third countries that are not simultaneously registered at EU level.

The geographical indication is protected only in the country of origin under national legislation

Article 7(1)(k) CTMR does not apply since the third-country geographical indication is not recognised and protected expressis verbis under EU legislation. In this respect, note that the provisions of the TRIPs Agreement are not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 44).

Nevertheless, when the CTM contains or consists of one such protected geographical indications, it must also be as sessed whether or not the CTM may be c onsidered descriptive and/or deceptive under Article 7(1)(c) and (g) CTMR in accordance with the general rules set out in these Guidelines. For example, where a third party observes that a CTM consists of the expression ‘Tea Murakami’ (invented example) which is a PGI in accordance with the national legislation of country X, Article 7(1)(k) CTMR will not apply for the reasons set out above, but it must be examined whether or not the CTM will be per ceived as a des criptive and/or deceptive sign by the relevant EU consumers.

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The geographical indication is protected under an agreement to which the European Union is a contracting party

The EU has signed a number of trade agreements with third countries that protect geographical indications. These instruments typically include a list of the geographical indications, as well as provisions on their conflicts with trade marks. The content and degree of precision may nevertheless vary from one agr eement to another. Geographical indications from third countries are protected at EU level after the relevant agreement has entered into force.

In this respect, it is settled case-law that a provision of an agreement entered into by the EU with non-member countries must be r egarded as being directly applicable when, in view of the wording, purpose and nat ure of the agreement, it may be concluded that the provision contains a clear, precise and unconditional obligation that is not subject, in its implementation or effects, to the adoption of any subsequent measure (judgment of 14/12/2000, joined cases C-300/98 and C-392/98, para. 42).

The scope of protection given to these PGIs by third countries is defined through the substantive provisions of the agreement concerned. While the oldest agreements (in particular in the field of wines and spirits) usually contained only general provisions, the ‘last generation’ of free trade agreements refer to the relationship between trade marks and PGIs in similar terms to those of Articles 13 and 14 of Regulation (EU) No 1151/2012 (see, for example, Articles 210 and 211 of the ‘Trade Agreement between the European Union and its Member States, of the one par t, and Colombia and Peru, of the other part’, OJ L 354, 21/12/2012).

In the light of this, CTMs that contain or consist of a third-country PDO/PGI that is protected by an agreement to which the EU is a contracting party (and is not simultaneously registered under Regulation (EU) No 1151/2012) are examined, on a case-by-case basis, in accordance with the specific substantive provisions of the agreement in question on the refusal of conflicting trade marks, taking into account the case-law cited above. The mere fact that a PDO/PGI from a third country is protected by those instruments does not automatically imply that a CTM that contains or consists of the PDO/PGI must be refused: this will depend on t he content and scope of the agreement’s relevant provisions.

The geographical indication is protected under an international agreement signed only by Member States

Protection of geographical indications under agreements between two Member States is precluded under current EU regulation of the PDOs/PGIs for agricultural products and foodstuffs (judgment of 08/09/2009, C-478/07, ‘Bud’). Such agreements are redundant and have no legal effect.

As regards international agreements signed exclusively by Member States with third countries (in particular, the Lisbon Agreement for the Protection of Appellations of Provenance and t heir International Registration), and for the sole purpose of the examination of absolute grounds for refusal, the EU is not a contracting party to these agreements, and they do not impose any obligations on the EU (see, by analogy, judgment of 14/10/1980, 812/79, para. 9).

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2.12 Community collective marks

2.12.1 Character of collective marks

A Community collective mark (CCTM) is a specific type of CTM which, pursuant to Article 66(1) CTMR, ‘is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings’.

A Community collective mark is aimed at distinguishing the goods and services of the members of the association which owns the mark from those of other companies which do not belong to that association. Therefore, the Community collective mark qualifies the commercial origin of certain goods and services by informing the consumer that the producer of the goods or the service provider belongs to a certain association and that it has the right to use the mark.

A CCTM is typically used by companies, together with their own individual marks, to indicate that they are members of a certain association. For example, Spain’s Association of Shoe Manufacturers may want to apply for the collective trade mark ‘Asociación Española de Fabricantes de C alzado’, which, while belonging to the association, is going to be used by all its members. A member of the association may want to use the collective mark in addition to its own individual mark, for example, ‘Calzados Luis’.

Collective marks do no t necessarily certify the quality of the goods, although this is sometimes the case. For example, regulations governing use frequently contain provisions to certify the quality of the goods and services of the members of the association and this is acceptable (see decision of 10/05/2012, R 1007/2011-2, para. 13).

It is up to the applicant to decide whether the trade mark fulfils the requirements of a collective mark or of an individual mark. This means that, in principle, the same sign could be applied for either as an individual CTM or, if the conditions described in this chapter are met, as a c ollective CTM. Differences between individual and collective marks do not depend on the signs per se, rather they depend on ot her characteristics such as the ownership or the conditions of use of the mark.

For example, an association can file an application for the word mark ‘Tamaki’ either as an individual mark or as a collective mark, depending on the use which is intended to be made of the mark (only by the association itself or also by the members thereof). If it is applied for as a CCTM, certain additional formalities must be m et, such as the submission of regulations of use, etc.

After filing, changes of the kind of mark (from collective to individual or vice versa) are accepted only under certain circumstances (see the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2.5).

The CTMR provisions apply to CCTMs, unless Articles 67-74 CTMR provide otherwise. CCTMs are thus subject, on t he one hand, to the general CTM regime and, on t he other hand, to some exceptions and particularities.

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It follows, firstly, that a CCTM is subject to broadly the same examination procedure and conditions as individual marks. In general terms, the classification of goods and services, examination of formalities and of absolute grounds for refusal is done according to the same procedure as that applied to individual trade marks.

For example, examiners will check the list of goods and s ervices or the language requirements in the same way as they do w ith individual trade marks. Likewise, whether the CCTM falls under one of the grounds for refusal of Article 7 CTMR will also be examined.

The regulations provided by the applicant governing the use of its CCTM must cover its use for all the goods and services included in the list of the CCTM application. For instance, the applicant may do so by reproducing the list of goods and services in the regulations of use or by referring to the list of goods and s ervices of the CCTM application.

With respect to CCTMs conflicting with PGIs/PDOs, the regulations governing the use of a CCTM should accurately reflect any limitation introduced to overcome such conflict. For example, the regulations of use of the CCTM ‘XYZ Designation of Origin’ for ‘wines’ should accurately reflect the fact that they refer to the use of the trade mark for wines complying with the PDO ‘XYZ’.

Secondly, the examination of a CCTM will also consider the exceptions and particularities of this kind of mark. These exceptions and particularities refer both to the formal and s ubstantive provisions. As regards formalities, the requirement of the regulations governing use of the mark is, for example, a specific characteristic of a CCTM. (For further details of the examination of formalities of CCTMs, including the regulations of use of the mark, see the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2 Collective marks).

The substantive exceptions and par ticularities which apply to a CCTM are described below.

2.12.2 Ownership

Ownership of CCTMs is limited to (i) associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued; and (ii) legal persons governed by public law.

The first type of owners typically comprises private associations with a c ommon purpose or interest. They must have their own legal personality and c apacity to act. Therefore, private companies such as sociedades anónimas, Gesellschaften mit beschränkten Haftung, etc., multiple applicants with separate legal personality or temporary unions of companies cannot be owners of a CCTM. As set out in the Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8.2.1, ‘collective does not mean that the mark belongs to several persons (co-applicants/co-owners) nor that it designates/covers more than one country’.

As regards the second type of owners, the concept ‘legal persons governed by public law’ must be interpreted broadly. This concept includes, on the one hand, associations,

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corporations and other entities governed by public law. This is, for example, the case of ‘Consejos Reguladores’ or ‘Colegios Profesionales’ under Spanish Law. On the other hand, it also includes other legal persons governed by public law, for example, the European Union, States or municipalities, which do not necessarily have a corporative or an associative structure but which can nevertheless be owners of CCTMs. In these cases, the requirement concerning the conditions for membership under Article 67(2) CTMR is not applicable (see decision of 22/11/2011, R 828/2011-1, para. 18 and decision of 10/05/2012, R 1007/2011-2, paras 17, 18). That is to say, when the applicant for a C CTM is a l egal person governed by public law which does not necessarily have a corporative or an associative structure, such as the European Union, a State or a municipality, the regulations governing use of the mark need not contain details concerning membership.

2.12.3 Particularities as regards absolute grounds for refusal

The absolute grounds for refusal listed in Article 7(1) CTMR apply to CCTMs. This means that these marks will first be ex amined under those provisions to verify, for example, whether or not they are distinctive, deceptive or have become a customary sign. If, for instance, a mark is not inherently distinctive under Article 7(1)(b) CTMR, it will be refused (see decision of 18/07/2008, R 229/2006-4, para. 7).

However, there are some exceptions and particularities which must also be taken into account when examining the absolute grounds for refusal for CCTMs. In addition to the grounds for refusal of a CTM application contained in Article 7(1) CTMR, examiners also assess the following specific grounds:

• descriptive signs • misleading character as to its nature • regulations of use contrary to public policy and morality.

These specific grounds for refusals can also be the object of observations filed by third parties.

2.12.3.1 Descriptive signs

Signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks (see judgment of 15/10/2003, T-295/01, para. 32 and judgment of 25/10/2005, T-379/03, para. 35).

As a result, a sign which exclusively describes the geographical origin of the goods or services (and which must be refused if it is applied for as an individual CTM) can be accepted if (i) it is validly applied for as a CCTM and (ii) it complies with the authorisation foreseen in Article 67(2) CTMR (see decision of 05/10/2006, R 280/2006-1, paras 16, 17).

According to this provision, the regulations governing use of a CCTM which is descriptive must authorise any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark.

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For example, an application for the word mark ‘Alicante’, specifying tourist services should be refused under Article 7(1)(c) CTMR if it is applied for as an individual CTM given that it describes the geographical origin of the services. However, as an exception, if it is validly applied for as a CCTM (i.e. it is applied for by an association or a legal person governed by public law and it complies with the other requirements of Community collective marks) and the regulations governing use of the mark contain the authorisation foreseen in Article 67(2) CTMR, it will be accepted under Article 7(1)(c) CTMR.

This exception exclusively applies to those signs which are descriptive of the geographical origin of the goods and services. If the CCTM is descriptive of other characteristics of the goods or services, this exception does not apply and the application will be refused under Article 7(1)(c) CTMR.

For example, if the word mark ‘Do-it-yourself’ is applied for as a C CTM for tools in Class 7, it will be considered descriptive of the intended purpose of the goods. Since the sign is descriptive of certain characteristics of the goods other than their geographical origin, it will be refused under Article 7(1)(c) CTMR despite having been applied for as a CCTM (see decision of 08/07/2010, R 934/2010-1, para. 35).

2.12.3.2 Misleading character as to its nature

The examiner must refuse the application if the public is liable to be misled as regards the character or the meaning of the mark, in particular if it is likely to be perceived as something other than a collective mark.

A collective mark which is available for use only by members of an association which owns the mark could be liable to mislead if it gives the impression that it is available for use by anyone who is able to meet certain objective standards.

2.12.3.3 Regulations of use contrary to public policy and morality

If the regulations governing use of the mark are contrary to public policy or to accepted principles of morality, the CCTM application must be refused.

This ground for refusal must be di fferentiated from that contained in Article 7(1)(f) CTMR, which prohibits registration of those trade marks which are by themselves contrary to public policy or to accepted principles of morality.

The refusal foreseen in Article 68(1) CTMR refers to situations where, regardless of the trade mark, the regulations governing use of the mark contain a provision which is contrary to public policy or to accepted principles of morality, for instance rules which discriminate on t he grounds of sex, creed or race. For example, if the regulations contain a clause which prohibits women from using the mark, the CCTM application will be refused, even if the trade mark does not fall under Article 7(1)(f) CTMR.

The examiner’s objection can be waived if the regulations are amended in order to remove the conflicting provision. In the above example, the CCTM application will be accepted if the clause which prohibits women from using the mark is deleted from the regulations.

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART C

OPPOSITION

SECTION 3

UNAUTHORISED FILING BY AGENTS OF THE TM PROPRIETOR

(ARTICLE 8(3) CTMR)

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Table of Contents

1 Preliminary Remarks................................................................................. 3 1.1 Origin of Article 8(3) CTMR........................................................................3 1.2 Purpose of Article 8(3) CTMR ....................................................................3

2 Entitlement of the Opponent .................................................................... 4

3 Scope of Application................................................................................. 5 3.1 Kinds of mark covered...............................................................................5 3.2 Origin of the earlier mark...........................................................................6

4 Conditions of Application ......................................................................... 7 4.1 Agent or representative relationship ........................................................7

4.1.1 Nature of the relationship ............................................................................... 7 4.1.2 Form of the agreement ................................................................................... 9 4.1.3 Territorial scope of the agreement ............................................................... 10 4.1.4 Relevant points in time ................................................................................. 11

4.2 Application in the agent’s name..............................................................12 4.3 Application without the proprietor’s consent.........................................14 4.4 Absence of justification on the part of the applicant.............................16 4.5 Applicability beyond identical signs – goods and services .................. 18

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1 Preliminary Remarks

According to Article 8(3) CTMR, upon oppos ition by the proprietor of an earlier trade mark, a trade mark shall not be registered:

where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

1.1 Origin of Article 8(3) CTMR

Article 8(3) CTMR has its origin in Article 6septies of the Paris Convention which was introduced into the Convention by the Revision Conference of Lisbon in 1958. The protection it affords to trade mark proprietors consists of the right to prevent, cancel, or claim as their own unauthorised registrations of their marks by their agents or representatives, and to prohibit use thereof, where the agent or representative cannot justify its acts. Article 6septies reads as follows:

(1) If the agent or representative of the person who is the proprietor of the mark in one of the countries of the Union applies, without such proprietor’s authorisation, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for, or demand its cancellation or, if the law of the country so allows, the assignment in his favour of the said registration, unless such agent or representative justifies his action.

(2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use.

(3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this Article.

Article 8(3) CTMR implements this provision only to the extent it gives the rightful proprietor the right to oppose applications filed without its authorisation. The other elements of Article 6septies of the Paris Convention are implemented by Articles 11, 18 and 53(1)(b) CTMR. Article 53(1)(b) CTMR gives the proprietor the right to cancel unauthorised registrations, whereas Articles 11 and 18 CTMR enable the proprietor to prohibit the use thereof and/or to request the transfer of the registration to its own name.

Since Article 41 CTMR provides that an opposition may only be based on the grounds provided for in Article 8, the additional rights conferred on the proprietor by the above provisions may not be invoked in opposition proceedings. Hence, any request by the opponent, either for the prohibition of use of the agent’s mark, or for an assignment of the application to itself, will be dismissed as inadmissible.

1.2 Purpose of Article 8(3) CTMR

The unauthorised filing of the proprietor’s trade mark by its agent or representative is contrary to the general obligation of trust underlying commercial co-operation

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agreements of this type. Such a misappropriation of the proprietor’s mark is particularly harmful to its commercial interests, as the applicant may exploit the knowledge and experience acquired during its business relationship with the proprietor and, thus, improperly benefit from the proprietor’s effort and investment (confirmed by judgment of 06/09/2006, T-6/05, ‘First Defense (I)’, para. 38 and subsequent references in, inter alia, Board of Appeal decisions of 16/05/2011, R 0085/2010-4, ‘Lingham’s’, para. 14, of 03/08/2010, R 1231/2009-2, ‘Berik’, para. 24, and of 30/09/2009, R 1547/2006-4, ‘Powerball’, para. 17).

Therefore, the purpose of Article 8(3) CTMR is to safeguard the legitimate interests of trade mark proprietors against the arbitrary appropriation of their trade marks, by granting them the right to prohibit registrations by agents or representatives that are applied for without their consent.

Article 8(3) CTMR is a manifestation of the principle that commercial transactions must be conducted in good faith. Article 52(1)(b) CTMR, which allows for the declaration of invalidity of a CTM on the ground that the applicant was acting in bad faith, is the general expression of this principle.

However, the protection granted by Article 8(3) CTMR is narrower than the one afforded by Article 52(1)(b) CTMR, because the applicability of Article 8(3) CTMR is subject to the fulfilment of a number of additional conditions laid down in this provision.

Consequently, the fact that the applicant filed the application in bad faith will not be in itself sufficient for the purposes of Article 8(3). Therefore, the opposition will be rejected if, despite being based exclusively on the bad faith of the applicant, it does not fulfil the necessary cumulative conditions required by Article 8(3) CTMR (set out in paragraph 4 below). Such a filing may only be sanctioned under Article 52(1)(b) by requesting the cancellation of the mark after it has been registered.

2 Entitlement of the Opponent

According to Article 41(1)(b) CTMR, the right to file an oppos ition on t he grounds of Article 8(3) CTMR is reserved only for the proprietors of the earlier trade marks. This is in contrast both to Article 41(1)(a) CTMR, which stipulates that oppositions based on Article 8(1) CTMR or 8(5) CTMR may also be filed by authorised licensees, and to Article 41(1)(c) CTMR, which stipulates that for oppositions based on Article 8(4) CTMR the right to file an opposition is also extended to persons authorised by national law to exercise the relevant rights.

It follows that since the right to oppose a CTM application on the grounds of Article 8(3) CTMR belongs exclusively to the proprietors of the earlier trade marks, oppositions filed in the name of third persons, be they licensees or otherwise authorised by the relevant national laws, will be dismissed as inadmissible due to lack of entitlement.

Case No Comment

Decision of 30/09/2009, R 1547/2006-4 ‘Powerball’ (confirmed by judgment of 16/11/2011, T-484/09, ‘Powerball’)

The Board confirmed OD’s decision rejecting the opposition based on Article 8(3) CTMR to the extent that the opponent was not the proprietor of the earlier right but merely claimed to be the licensee of the company Nanosecond Technology Co. Ltd.

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Case No Comment

Decision of 14/06/2010, R 1795/2008-4 ‘ZAPPER-CLICK’ (on appeal, judgment of 03/10/2012, T-360/10, ‘ZAPPER-CLICK’)

The respondent failed to meet the requirement regarding ownership of the trade mark, namely of the ownership of the registered mark ZAPPER-CLICK. On appeal, the Court did not address this point.

Likewise, if the opponent fails to prove that it was the rightful proprietor of the mark when the opposition was filed, the opposition will be dismissed without any examination of its merits due to lack of substantiation. The evidence required in each case will depend on t he kind of right relied upon. The current proprietor may also invoke the rights of its predecessor in title if the agency/representation agreement was concluded between the previous proprietor and the applicant, but this needs to be duly substantiated by evidence.

3 Scope of Application

3.1 Kinds of mark covered

Article 8(3) CTMR applies to earlier ‘trade marks’ that have been appl ied for as Community trade marks without their proprietor’s consent. However, Article 8(2) CTMR does not apply to oppositions based on this ground, as it only enumerates the kinds of earlier rights on which an opposition may be entered under paragraphs (1) and (5) of the same article. Therefore, the kinds of rights on which an opposition based on Article 8(3) CTMR may be entered needs to be determined in more detail, both as regards their nature and their geographical origin.

In the absence of any restriction in Article 8(3) CTMR and i n view of the need to provide effective protection to the legitimate interests of the real proprietor, the term ‘trade marks’ should be interpreted broadly and must be understood as including pending applications, since there is nothing in this provision restricting its scope exclusively to registered trade marks.

For the same reasons unregistered marks or well-known marks within the meaning of Article 6bis of the Paris Convention also fall within the term ‘trade marks’ within the sense of Article 8(3) CTMR. Consequently, both registered and unr egistered trade marks are covered by this provision, to the extent of course that the law of the country of origin recognises rights of the latter kind.

In contrast, the express reference to ‘trade marks’ means that Article 8(3) CTMR does not apply to mere signs used in the course of trade, other than unregistered trade marks. Likewise, other kinds of intellectual property rights that could be used as a basis for an invalidity action cannot be invoked in the context of Article 8(3) CTMR either.

Case No Comment

Decision of 08/06/2010, B 1 461 948 ‘Gu Tong Tie Gao’

As Article 8(3) refers only to earlier trade marks, the evidence filed by the opponent with regard to rights in respect of copyright law in the territory of China was not relevant. This is another kind of intellectual property right which is excluded as a result of the express reference in the article to ‘trade marks’.

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It is clear from the wording of Article 8(3) CTMR that the trade mark on which the opposition is based must be earlier than the CTM application. Hence, the relevant point in time that should be t aken into account is the filing or priority date of the contested application. The rules according to which the priority should be determined depends on t he kind of right relied upon. If the earlier right has been acquired by registration, it is its priority date that should be taken into account for assessing whether it precedes the application, whereas if it is a us er-based right, it must have been acquired before the filing date of the CTM application. In the case of earlier well- known marks, the mark must have become well-known by the time the CTMA is applied for.

Case No Comment

Decision of 21/12/2009, R 1621/2006-4, ‘D-Raintank’

The Board noted that the trade mark applications filed by the cancellation applicant in 2003 were all later than the filing date of the contested CTM and even later than its date of registration, and could not serve to establish that the cancellation applicant owned a ‘mark’ in the sense of a registered mark, be it anywhere in the world, for the sign at issue when the CTM was filed. It went on to affirm that ‘Obviously, nobody can base a claim on relative grounds for refusal or declaration of invalidity on rights which are younger than the contested CTM’ (para. 53).

Decision of 19/06/1999, B 3 436, ‘NORAXON’

The period to be t aken into account in order to determine the applicability of Article 8(3) CTMR starts on the date on which the CTM application in question came into force, i.e. 26/10/1995. This was the priority date in Germany, claimed by the applicant, granted by the Office and subsequently published, and not the filing date of the CTM application at the Office.

3.2 Origin of the earlier mark

As Article 8(2) CTMR does not apply to oppositions based on Article 8(3) CTMR, it cannot serve to define the territorial extent of protection granted by Article 8(3) CTMR. In the absence of any other reference in Article 8(3) CTMR to a ‘relevant territory’, it is immaterial whether the earlier trade mark rights reside in the European Union or not.

The practical importance of this provision lies precisely in the legal capacity it confers on holders of trade mark rights outside the European Union to defend these rights against fraudulent filings, since proprietors of trade mark rights within the European Union may rely on t he other grounds provided for in Article 8 CTMR to defend their earlier rights from such acts. Of course, Community trade marks or national marks, which provide a basis for opposition pursuant to Article 8 CTMR, also qualify as earlier marks that can be invoked as a basis for an Article 8(3) CTMR opposition.

Case No Comment

Decision of 19/12/2006, B 715 146, ‘SQUIRT’

For the purpose of Article 8(3), it is immaterial where in the world the rights of proprietorship reside. Indeed, if in the Paris Convention the proprietorship in a Paris Union member country is required, in the absence of any reference in the CTMR to any territory in which such proprietorship shall exist, one must conclude that it is sufficient that the opponent complies with the requirements of Article 5 CTMR concerning ‘Persons who can be proprietors of Community trade marks’. In the present case, the opponent complied with such a requirement, as it was a company based in the USA.

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Case No Comment

Decision of 10/01/2011, 3253 C, ‘MUSASHI’ (fig. mark) Cancellation proceedings

The fact that the earlier registrations were from non-EU countries has no bearing on the invalidity ground at issue, since Article 8(2) CTMR, imposing this territorial condition, does not apply to proceedings based on Article 8(3) CTMR and cannot serve to define the territorial extent of protection granted by that article. ‘In the absence of any reference to a “relevant territory” in Article 8(3) CTMR, the Cancellation Division must presume that earlier trade marks registered in countries outside the EU may constitute the basis for an invalidity request based on A rticle 8(3) CTMR’ (para. 33).

Decision of 26/01/2012, R 1956/2010-1 ‘Heatstrip’ (confirmed by T-184/12)

The opposition was based on an unregistered mark protected, inter alia, in Australia. The Board considered that the evidence submitted by the opponent supports that it has been using the mark in Australia to a substantial extent (paras 3 and 34 respectively).

Decision of 19/05/2011, R 0085/2010-4 ‘Lingham’s’ (fig. mark)

The opposition was based on a r egistered mark protected in Malaysia. By filing the Malaysian registration certificate, it was proven that the opponent is the owner of the Malaysian trade mark.

4 Conditions of Application

Article 8(3) CTMR entitles trade mark proprietors to oppose the registration of their marks as Community trade marks, provided the following substantive cumulative requirements are met (see judgment of 13/04/2011, T-262/09, ‘First Defense’ (II), para. 61):

1. The applicant is or was an agent or representative of the proprietor of the mark; 2. The application is in the name of the agent or representative; 3. The application was filed without the proprietor’s consent; 4. The agent or representative fails to justify its acts; 5. The signs are identical or with slight modifications and t he goods and services

are identical or closely related.

4.1 Agent or representative relationship

4.1.1 Nature of the relationship

In view of the purpose of this provision, which is to safeguard the legal interests of trade mark proprietors against the misappropriation of their trade marks by their commercial associates, the terms ‘agent’ and ‘ representative’ should be interpreted broadly to cover all kinds of relationships based on any business arrangement (governed by written or oral contract) where one party is representing the interests of another, regardless of the nomen juris of the contractual relationship between the principal-proprietor and the CTM applicant (confirmed by judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), para. 64).

Therefore, it is sufficient for the purposes of Article 8(3) CTMR that there is some agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the trade mark proprietor. It follows that Article 8(3) CTMR may also extend, for example, to licensees of the proprietor, or to authorised distributors of the goods for which the mark in question is used. The burden of proof regarding the existence of an agent-principal relationship

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lies with the opponent (confirmed by the judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), paras 64 and 67).

Case No Comment

Judgment of 09/07/ 2014, T-184/12 ‘Heatstrip’

The Board of Appeal concluded that, although there was no written co-operation agreement between the parties, their relationship on the date of the application for the CTM was, in view of the business correspondence between them, more than that of merely buyer and seller. There was, rather, a tacit cooperation agreement that led to a fiduciary obligation on the part of the CTM applicant (para. 67).

Decision of 29/02/2012, B 1 818 791, ‘HOVERCAM’ (fig. mark)

The Opposition Division found that the evidence submitted by the opponent showed that the relationship and its ultimate purpose constituted an example of commercial cooperation, through which a general duty of trust and l oyalty was imposed on the applicant and was the type of relationship envisioned under Article 8(3) CTMR (p. 5).

Given the variety of forms that commercial relationships may acquire in practice, a case-by-case approach is applied, focusing on whether the contractual link between the proprietor-opponent and t he applicant is only limited to a s eries of occasional transactions, or if, conversely, it is of such a duration and content to justify the application of Article 8(3) CTMR (as regards the points in time which are crucial for the relationship, see below, paragraph 4.1.4). The material question should be whether it was the co-operation with the proprietor that gave the applicant the possibility to get to know and appreciate the value of the mark and incited the applicant to subsequently try to register the mark in its own name.

Nevertheless, some kind of co-operation agreement has to exist between the parties. If the applicant acts completely independently, without having entered into any kind of fiduciary relationship with the proprietor, it cannot be considered an agent within the meaning of Article 8(3) CTMR (confirmed by judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), para. 64).

Case No Comment

Decision of 16/06/2011, 4103 C, ‘D’Angelico’ (fig. mark) Cancellation proceedings.

The Cancellation Division found that rather than an agent or representative relationship, at the time of filing the CTM the parties held parallel and independent rights to the marks in the USA and Japan. For these reasons, Article 8(3) CTMR was not applicable .

Case No Comment

Decision of 17/03/2000, B 26 759 ‘EAST SIDE MARIO’S’

A mere desire to establish a commercial relationship with the opponent cannot be considered as a concluded agreement between the parties regarding the use of the contested trade mark.

Therefore, a mere customer or a client of the proprietor cannot amount to an ‘agent or representative’ for the purposes of Article 8(3) CTMR, since such persons are under no special obligation of trust to the trade mark proprietor.

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Case No Comment

Judgment of 13/04/2011, T-262/09, ‘First Defense’ (II)

The opponent did not submit any evidence showing the existence of an agent-principal relationship with the applicant. The opponent provided invoices and order forms addressed to itself, on the basis of which the existence of a business agreement between the parties could, in other circumstances, be assumed. However, in the present case, the GC concluded that the evidence does not show that the applicant acted on behalf of the opponent, but merely that there was a seller-customer relationship which could have been established without a prior agreement between them. Such a relationship is not sufficient for Article 8(3) CTMR to be applicable (para. 67).

Decision of 26/06/2009, B 955 528 ‘FUSION’ (fig. mark)

The Office considered that the evidence on the kind of commercial link between the opponent and the applicant was inconclusive, that is, it could not be established whether the applicant was really an agent or representative or a m ere purchaser of the opponent’s goods. Accordingly, the Office was unable to hold that Article 8(3) CTMR applied.

It is irrelevant for the purposes of Article 8(3) CTMR whether an exclusive agreement exists between the parties, or just a s imple, non-exclusive commercial relationship. Indeed, a c ommercial co-operation agreement entailing an obl igation of loyalty can exist even in the absence of an ex clusivity clause (see judgment of 09/07/2014, T-184/12 ‘Heatstrip’, para. 69).

Article 8(3) CTMR also applies to analogous forms of business relationships that give rise to an obligation of trust and confidentiality between the trade mark proprietor and the professional, as is the case with legal practitioners and a ttorneys, consultants, trade mark agents etc. However, the legal representative or manager of the opponent’s company cannot be considered as an agent or representative within the meaning of Article 8(3) CTMR, given that such persons are not business associates of the opponent. The purpose of this provision is not to protect the proprietor from infringing acts coming from within its company. It may well be that such acts can be sanctioned under the general bad faith provision in Article 52(1)(b) CTMR.

Case No Comment

Decision of 20/03/2000, B 126 633 ‘Harpoon’ (fig. mark)

In this case, the applicant was a l egal representative of the opponent’s company. The opposition was rejected.

4.1.2 Form of the agreement

It is not necessary that the agreement between the parties assumes the form of a written contract. Of course, the existence of a formal agreement between the parties will be of great value in determining exactly what kind of relationship exists between them. As mentioned above, the title of such an agreement and the terminology chosen by the parties should not be taken as conclusive. What counts is the kind of commercial co-operation established in substance and not its formal description.

Even in cases where a written contract does not exist, it may still be possible to infer the existence of a commercial agreement of the kind required by Article 8(3) CTMR by reference to indirect indications and evidence, such as the commercial correspondence between the parties, invoices and purchase orders for goods sold to the agent, or credit notes and other banking instruments (always bearing in mind that a mere customer

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relationship is insufficient for Article 8(3) CTMR). Even dispute resolution agreements may be relevant to the extent they give sufficient information about the past relationship between the parties.

Case No Comment

Decision of 07/07/2003, R 336/2001-2 ‘GORDON and SMITH’ (fig. mark)

The Opposition Division was correct to conclude that there was an agency relationship between the applicant and the opponents, on the basis of correspondence indicating that the two parties had a long and close commercial relationship. The applicant company acted as a distributor of the opponents’ goods (para. 19).

Furthermore, circumstances such as sales targets imposed on the applicant, or payment of royalties, or production of the goods covered by the mark under license or help in the setting up o f a l ocal distribution network, will be s trong indications in the direction of a commercial relationship of the type covered by Article 8(3) CTMR.

The Court also decided that active co-operation between a C TM applicant and an opponent in the advertising of the product, in order to optimise the marketing thereof, could give rise to the fiduciary relationship required under Article 8(3) CTMR.

Case No Comment

Decision of 26/01/2012, R 1956/2010-1 ‘Heatstrip’ (appealed confirmed by T-184/12)

The Court confirmed the findings of the Board, who considered that a binding contractual relationship could be established by means of business letters exchanged by the parties, including by email. The Board examined the e-mail correspondence between the parties to determine what each party asked from the other (para. 50). The Board concluded that the emails showed that both parties were actively cooperating in the promotion of the product, by advertising it in brochures and exhibiting it at a fair, in order to create the best conditions for its successful marketing: the opponent supplied the material for these purposes and the applicant adapted it to the German market (para. 54). The Board thus concluded that the e- mail correspondence denoted an agreement of commercial co- operation between the parties of a kind that gives rise to a fiduciary relationship (para. 56). The Court dismissed the applicant’s arguments that there was no co-operation between the parties (because the applicant was not integrated in the opponent’s sales structure, was not subject to a no- competition clause and had to bear the costs of sale and promotion) and confirmed the Board’s decision (para. 67 et seq).

On the other hand, the mere desire of the applicant to enter into a commercial relationship with the opponent cannot be considered as a concluded agreement between the parties. Prospective agents or representatives are not covered by Article 8(3) CTMR (see B 26 759 ‘East Side Mario’s’, quoted above).

4.1.3 Territorial scope of the agreement

Even though the letter of Article 8(3) CTMR does not refer to the territorial scope of the agreement between the trade mark proprietor and its agent or representative, an inherent limitation to relationships covering the EU or a part thereof must be read in this provision.

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This is more in line with the economic considerations underlying Article 8(3), which are to prevent agents or representatives from unduly exploiting a commercial relationship covering a given territory, by filing an unauthorised application for the principal’s mark precisely in that territory, that is, in the territory where the applicant will be more able to benefit from the infrastructure and know-how it possesses as a result of its prior relationship with the proprietor. Therefore, as the filing prohibited by Article 8(3) CTMR is an application for the acquisition of trade mark rights in the EU, the agreement must also concern the same territory.

Hence, a purposive interpretation must be followed in this regard, according to which Article 8(3) CTMR only applies to agreements which cover the territory of the EU, whether in whole or in part. In practice, this means that world-wide or pan-European agreements are covered by this provision, as are agreements extending to one or more Member States, or only covering part of their territory, irrespective of whether they also include third territories. Conversely, agreements exclusively applying to third territories are not covered.

4.1.4 Relevant points in time

The agent-representative relationship must have been established prior to the filing date of the CTM application. Therefore, it is immaterial whether after that time the applicant entered negotiations with the opponent, or made unilateral proposals with the purpose of becoming a representative or agent of the latter.

Case No Comment

Decision of 19/05/2011, R 0085/2010-4 ‘Lingham’s’

The opponent granted the applicant a special power of attorney (PoA), consenting to the applicant‘s filing of trade mark applications. Subsequent to this PoA, the applicant filed a CTM. After the filing, the opponent revoked the PoA and filed the opposition.

The Board considered that the relevant point in time is the filing date. At that moment, the owner’s consent was present. The revocation had effects ex nunc (and does not affect the validity of actions performed under the PoA) and not ex tunc (as if the PoA had never existed) (para. 24).

Judgment of 06/09/2006, T-6/05 ‘FIRST DEFENSE’ (I)

The Board of Appeal ought to have examined whether, on the day of the application for registration of the mark, the intervener was still bound by the consent (para. 50).

However, even if the agreement between the parties was formally concluded after the filing date of the application, it may still be possible to deduce from the evidence that the parties were already in some form of commercial co-operation before the signature of the relevant contract and that the applicant was already acting as the opponent’s agent, representative, distributor or licensee.

On the other hand, the agreement between the parties does not have to be technically still in force when the application is filed. The reference to a filing made by an ‘agent or representative’ should not be understood as a formal requirement that must be pr esent at the time the CTM application is filed. Article 8(3) also applies to agreements that expired before the filing date of the CTM application, provided that the time that has lapsed is of such duration that it can be reasonably assumed that

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the obligation of trust and confidentiality was still present when the CTM application was filed (confirmed by judgment of 13/04/2011, T-262/09 ‘First Defense’ (II), para. 65).

Article 8(3) CTMR and Article 6septies of the Paris Convention do not protect a trade mark proprietor who is careless and makes no efforts to secure trade mark protection on its own. Post-contractual fiduciary obligations mean that none o f the parties may use the termination of an agreement as a pretext for getting rid of its obligations, for example by terminating an agreement and immediately afterwards filing a trade mark. The rationale of Article 8(3) CTMR and A rticle 6septies of the Paris Convention is to prevent a situation where a representative in country A of a principal who owns trade marks in country B, and who is meant to market the trade-marked goods and observe the interests of the latter in country A, uses the filing of a trade mark application in country A as a w eapon against the principal, for example to force the principal to continue with the representative and to prevent him from entering the market in country A. This rationale likewise applies if an agr eement exists but the representative terminates it to take advantage and file a trade mark for the same reasons. However, this does not create absolute rights for the principal to obtain trade mark protection in other countries. The mere fact that the principal holds a trade mark in country B does not give him an abs olute right to obtain trade marks in all other countries; the trade marks registered in different countries are in principle independent from each other and may have different proprietors, in accordance with Article 6(3) of the Paris Convention. Article 6septies of the Paris Convention is an exception to this principle and only to the extent that the contractual or de facto obligations of the parties involved justify this. Only to that extent is it justified that the ensuing CTM would ‘belong’ to the principal under Article 18 CTMR (decision of 19/11/2007, R 0073/2006-4 ‘Porter’, para. 26).

This should be assessed on a case-by-case basis, and the decisive factor should be whether it is still possible for the applicant to take commercial advantage of its expired relationship with the trade mark proprietor by exploiting the know-how and contacts it acquired because of its position.

Case No Comment

Decision of 19/11/2007, R 0073/2006-4 ‘Porter’

The contested application was not filed during the validity of the agreements between Gallant (owner of shares in Porter, the applicant) and Yoshida (opponent) which allowed Gallant to file a CTM, but nearly one year after the termination of the last agreement (para. 25). The Board noted that post-termination fiduciary obligations are not meant to last forever but for a certain transitional period after the termination of the agreement in which the parties may re-define their commercial strategies and concluded, inter alia, that any post-contractual relationship between Yoshida and Gallant was phased out at the time of the filing of the CTM (para. 27).

Decision of 21/02/2002, B 167 926 ‘AZONIC’

In this case, less than three months after the expiry of a contract relationship, such as a license agreement, is a period within which it was still considered that the fiduciary relationship between the parties exists and imposes on the applicant a duty of loyalty and confidence.

4.2 Application in the agent’s name

According to Article 8(3) CTMR, the trade mark applied for shall not be r egistered where the agent or representative applies for registration thereof in its own name. It will usually be eas y to assess whether this requirement has been fulfilled, by comparing

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the name of the applicant with that of the person appearing in the evidence as the agent or representative of the proprietor.

However, there may be cases where the agent or representative will try to circumvent this provision by arranging for the application to be filed by a third person, whom it either controls, or with whom it has entered into some form of understanding to that effect. In such cases adopting a more flexible approach is justified. Therefore, if it is clear that because of the nature of the relationship between the person filing the application and the agent, the situation is effectively the same as if the application had been filed by the agent himself, it is still possible to apply Article 8(3) CTMR, notwithstanding the apparent discrepancy between the applicant’s name and the name of the proprietor’s agent.

Such a c ase could arise if the application is filed not in the name of the agent’s company, but in the name of a natural person that shares the same economic interests as the agent, as for example its president, vice-president or legal representative. Given that in this case the agent or representative could still benefit from such a filing, it should be considered that the natural person is bound by the same limitations as the company.

Case No Comment

Decision of 21/02/2002, B 167 926 ‘AZONIC’

The Opposition Division considered that, even though the CTM application was applied for in the name of the natural person Mr Costahaude instead of directly in the name of the legal person STYLE’N USA, INC., the situation was effectively the same as if it had been filed in the name of the legal person.

Decision of 28/05/2003, B 413 890 ‘CELLFOOD’

If it is clear that because of the nature of the relationship between the person filing the application and t he agent, the situation is effectively the same as if the application had been filed by the agent himself, it is still possible to apply Article 8(3) CTMR, notwithstanding the apparent discrepancy between the applicant’s name and the name of the owner’s agent.

Moreover, if the person filing the contested application had also signed the agency agreement on behalf of the company, this would have to be c onsidered a s trong argument in favour of the application of Article 8(3) CTMR, since in such a case the applicant cannot possibly deny direct knowledge of the relevant prohibitions. Similarly, if an agency agreement contained a clause holding the management of the company personally responsible for the observance of the contractual obligations undertaken by the agent, this would also have to be considered a further indication that the filing of the application is covered by the prohibition of Article 8(3) CTMR.

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Case No Comment

Decision of 21/02/2002, B 167 926 ‘AZONIC’

Bearing in mind the position of the authorised representative of the Licensee Company, the Office considered that despite the fact that the CTM application was made in the name of this natural person, the situation was effectively the same as if it had been filed by the legal person, i.e. the Licensee Company. The CTM application in the name of the former could have a direct effect on the latter due to their professional relationship, and, furthermore, the President or Vice-President of a company should be considered obliged by the same limitations as their company, or at least temporarily obliged in the case of the expiry of their professional relationship.

This position is strengthened by the fact that in the present case there is a clause in the renewed agreement that establishes the licensor’s immediate termination right in the case that ‘… control of STYLE’N (the licensee) is transferred and the management thereby changed’, which shows that the management of the licensee company was also bound by the terms of the agreement.

A similar case arises where the agent or the representative and t he applicant are distinct legal entities, but the evidence shows that they are controlled, managed or run by the same natural person. For the reasons given above it is appropriate to ‘lift the corporate veil’ and apply Article 8(3) also to these cases.

4.3 Application without the proprietor’s consent

Even though the absence of the proprietor’s consent is a necessary condition for the application of Article 8(3), the opponent does not have to submit evidence which shows that the agent was not permitted to file the CTM application. A mere statement that the filing was made without its consent is generally sufficient. This is because the opponent cannot be ex pected to prove a ‘ negative’ fact, such as the absence of consent. In these cases the burden of proof is reversed and it is up to the applicant to prove that the filing was authorised, or to give some other justification for its acts.

In view of the need to provide effective protection to the legitimate proprietor from unauthorised acts of its agents, the application of Article 8(3) should be denied only where the proprietor’s consent is sufficiently clear, specific and unconditional (see, for example, judgment of 06/09/2006, T-6/05, ‘First Defense’ (I), para. 40).

Therefore, even if the proprietor has expressly authorised the filing of the CTM application, its consent cannot be considered sufficiently clear if it has not also explicitly specified that the application may be in the name of the agent.

Case No Comment

Decision of 07/07/2003, R 336/2001-2 ‘GORDON and SMITH’ (fig. mark)

‘In view of its serious effect in extinguishing the exclusive rights of the proprietors of the trade marks in issue in the main proceedings (rights which enable them to control the initial marketing in the EEA), consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated’ (para. 18).

Likewise, even if the proprietor has expressly authorised the filing of a CTM application, its consent cannot be considered specific enough for the purposes of Article 8(3)

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CTMR if there is no indication of the specific signs which the applicant has permission to file as Community trade marks.

It will be generally easier to assess whether the filing was authorised by the proprietor where the conditions under which an agent or representative may apply for a CTM application are adequately regulated by contract, or are given by other kinds of direct evidence (letters, written representations etc.). In most cases, such evidence will be sufficient to show whether the proprietor has given its express consent, or if the applicant has exceeded the limits of its authorisation.

In other cases a contract will either not exist or it will be inadequate on the subject. Although the wording of Article 8(3) is in principle broad enough to include cases of tacit or implied consent, such consent should only be i nferred if the evidence is sufficiently clear as to the intentions of the proprietor. If the evidence is completely silent as to the existence of an ex press or implied authorisation, lack of consent should be generally presumed.

Notwithstanding indirect indications and evidence pointing to implied consent, any ambiguity or doubt should be interpreted in favour of the opponent, as it will usually be q uite difficult to assess whether such consent is sufficiently clear and unequivocal.

For example, the mere fact that the proprietor tolerated unauthorised applications in the name of the agent in third jurisdictions cannot alone create legitimate expectations on the part of the applicant that the proprietor will not object to the filing of a CTM application either.

Case No Comment

Decision of 31/01/2001, B 140 006 ‘GORDON and SMITH’ (fig. mark) (confirmed by decision of 07/07/2003, R 336/2001-2)

The mere fact that the opponents failed to immediately oppose the applicant’s action to register the trade mark after they received notice of the fact did not constitute consent.

The fact that the proprietor tolerates conduct outside the boundaries of a contract (such as use of the sign) cannot lead to the conclusion that filing the CTM did not breach the established fiduciary duty if consent is not clear, specific and unconditional.

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Case No Comment

Joined cases T-537/10 and T-538/10, ‘FAGUMIT’

The applicant (the CTM owner in cancellation proceedings) focused her line of argument on the consent allegedly granted by the proprietor of the mark. The Court held (like the Board of Appeal) that the consent for the purposes of the registration of the mark in the name of the representative or agent must be clear, specific and unconditional (paras 22-23).

The document relied upon by the CTM owner does not show consent within the meaning of Article 8(3) CTMR (para. 28). The CTM owner was not mentioned in the document and it did not refer to the possibility of registration of the sign as a t rade mark. The CTM owner cannot rely on the fact that the cancellation applicant did not object to the use of the sign by companies other than those referred to in the document. Use of the marks occurred during the course of marketing the goods produced by the cancellation applicant. However, such use is the logical consequence of the cooperation between the cancellation applicant and the distributors of its goods and does not show any abandonment of the sign, which would enable anyone to make an application for the registration of that sign – or its dominant element – as a CTM (para. 27)

Even where consent of the proprietor has been deemed to be clear, specific and unconditional, it will be a q uestion of fact to determine if such consent survives a change of proprietor by way of an asset sale.

Case No Comment

Judgment of 06/09/2006, T-6/05, ‘FIRST DEFENSE’ (I)

The General Court remitted a case of this nature back to the Board of Appeal in order to determine whether the consent obtained by the CTM applicant had survived the purchase of the assets of the former trade mark holder and whether, on the day of the application for registration of the mark, the new holder of the trade mark in the USA (the opponent) was still bound by that consent.

If the opponent was no l onger bound by the consent, the GC indicated that the Board ought then to determine whether the applicant had a valid justification which could offset the lack of such consent.

4.4 Absence of justification on the part of the applicant

As mentioned above, since it is not possible for the opponent to prove the absence of consent, the burden of proof is reversed and it is up to the applicant to show that the filing of the application was authorised by the proprietor. Although Article 8(3) CTMR treats the lack of the proprietor’s consent and the absence of a valid justification on the part of the applicant as two separate conditions, these requirements largely overlap to the extent that if the applicant establishes that the filing of the application was based on some agreement or understanding to this effect, then it will have also provided a valid justification for its acts.

In addition, the applicant may invoke any other kind of circumstance showing that it was justified to file the CTM application in its own name. However, in the absence of evidence of direct consent, only exceptional reasons are accepted as valid justifications, in view of the need to avoid a v iolation of the proprietor’s legitimate

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interests without sufficient indications that its intention was to allow the agent to file the application in its own name.

For example, it could be possible to infer that the proprietor has tacitly consented to the filing of the application if it does not react within a r easonable period of time after having been i nformed by the applicant that it intends to apply for a C TM in its own name. However, even in such a c ase it will not be pos sible to assume that the application has been authorised by the proprietor if the agent had not made it sufficiently clear to the proprietor in advance in whose name it would file the application.

Another case of valid justification could be if the proprietor causes its agent to believe that it has abandoned the mark, or that it is not interested in obtaining or maintaining any rights in the territory concerned, for example by suspending the use of the mark over a relatively long period of time.

The fact that the proprietor does not want to spend money on a registration of its trade mark does not give the agent a right to act on its own initiative, as the proprietor might still have an interest in using its trade mark in the territory although it is not registered. Such a bus iness decision cannot be t aken in itself as a s ign that the proprietor has given up the rights in its mark.

Justifications exclusively linked to applicant’s economic interests, such as the need to protect its investment in setting up a local distribution network and promoting the mark in the relevant territory, cannot be considered valid for the purposes of Article 8(3) CTMR.

Nor can the applicant successfully argue in its defence that it is entitled to some financial remuneration for its efforts and ex penditure in building-up goodwill for the mark. Even if such remuneration were well deserved or is expressly stipulated in the agency agreement, the applicant cannot use the registration of the mark in its own name as a means of extracting money from the opponent or in lieu of financial compensation, but should try to settle its dispute with the proprietor either by way of agreement or by suing for damages.

Finally, if the applicant does not provide any justification for its actions, it is not for the Office to make any speculations in that regard (see judgment of 09/07/2014, T-184/12 ‘Heatstrip’, paras 73 and 74).

Case No Comment

Decision of 04/10/2011, 4443 C, ‘CELLO’

As to the justificatory argument that the CTM application was filed in order to protect the goodwill of the mark in the EU, which had been established solely as a result of its trading activities, the Cancellation Division considered that the fact that a di stributor, exclusive or otherwise, develops the goodwill of the trade mark of the owner in its allocated territory forms part of the usual duties of a distributor and cannot constitute, in itself and in the absence of other circumstances, a valid justification for the appropriation of the owner’s mark by the distributor.

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Case No Comment

Decision of 10/01/2011, 3253 C, ‘MUSASHI’ (fig. mark)

As regards justification concerning economic claims of the party filing the CTM and its arguments that it is entitled to some financial remuneration for permitting the sign to enjoy protection at EU level, and that it could be transferred to the Cancellation applicant, it was held that this could not be valid justification within the meaning of Article 8(3). ‘Even if remuneration were well deserved, the CTM proprietor cannot use the registration of a mark in its own name as a means of receiving payment’ (from the Cancellation applicant) (para. 47).

Decision of 07/07/2003, R 336/2001-2 ‘GORDON and SMITH’ (fig. mark)

An act which compromises the interests of the trade mark proprietor, such as the filing of a t rade mark application in the agent’s or a representative’s name without the proprietor’s consent, and is driven solely by an intention to safeguard the agent’s or a representative’s own interests, is not considered justifiable for the purposes of Article 8(3) CTMR. The same applies to the applicant’s second argument, that is, that it was justified in doing so because it bore the registration costs. The interests of the trade mark proprietor cannot be subordinate to an agent’s or a representative’s financial expenses. The fact that an opponent might be unwilling to incur any financial expenses to register a t rade mark does not automatically grant a right to the agent or representative to proceed with the registration of the trade mark in its own name. This would constitute a violation of the agent’s or representative’s duty of trust and loyalty towards the trade mark proprietor (para. 24).

4.5 Applicability beyond identical signs – goods and services

Article 8(3) CTMR provides that a CTM application will not be registered where ‘an agent or representative of the proprietor of the mark applies for registration thereof in his own name’. Such an explicit reference to the principal’s trade mark gives the prima facie impression that the CTM applied for must be the same as the earlier mark.

Hence, a literal interpretation of Article 8(3) CTMR would lead to the conclusion that its application is only possible where the agent or representative intends to register a mark identical to that of the proprietor.

Moreover, the text of Article 8(3) CTMR does not refer to the goods and services for which the application has been filed and for which the earlier mark is protected and, thus, gives no guidance as to what the exact relationship between the respective goods and services should be for the article to apply.

However, applying Article 8(3) CTMR exclusively to identical signs for identical goods or services would render this provision largely ineffective, as it would allow the applicant to escape its consequences by merely making slight modifications either to the earlier mark or to the specification of goods and s ervices. In such a c ase, the proprietor’s interests would be seriously prejudiced, especially if the earlier mark were already in use and the variations made by the applicant were not significant enough to rule out confusion. What is more, if the application were allowed to proceed to registration despite its similarity to the earlier mark, the applicant would be in a position to prevent any subsequent registration and/or use of the earlier mark by the original proprietor within the EU, by relying on A rticles 8(1) or 9(1) CTMR, or the equivalent provisions of national law.

To sum up, in view of the need to effectively protect the legitimate proprietor against unfair practices by its representatives, a restrictive interpretation of Article 8(3) CTMR

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must be av oided. Therefore, Article 8(3) CTMR must be appl ied not only where the respective marks are identical, but also:

• when the sign applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do no t substantially affect its distinctiveness; and

• when the goods and services in conflict are closely related or equivalent in commercial terms. In other words, what finally counts is that the goods or services of the applicant may be perceived by the public as ‘authorised’ products, the quality of which is still somehow ‘guaranteed’ by the opponent, and which it would have been reasonable for the opponent to market in view of the goods and services protected under the earlier mark.

The following are examples of conflicting signs where the Office considered that Article 8(3) CTMR is applicable:

Earlier mark CTM application Case No

FIRST DEFENSE

(2 US earlier rights)

Decision of 04/05/2009, R 0493/2002-4, ‘First Defense’

(II)

Judgment of 13/04/2011, T-262/09, ‘FIRST DEFENSE’ (II)

Decision of 03/05/2012, R 1642/2011-2 ‘Maritime Acopafi’

(fig. mark)

BERIK (word mark) (2 earlier rights)

Decision of 03/08/2010, R 1367/2009-2 ‘BERIK DESIGN’

(fig. mark)

BERIK (word mark) (2 earlier rights)

Decision of 03/08/2010, R 1231/2009-2 ‘BERIK’ (fig.

mark)

NORAXON Decision of 19/06/1999, B 3 436‘NORAXON’

APEX Decisions of 26/09/2001,

B 150 955 and B 170 789, ‘APEX’

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The following are examples of goods and services in conflict where the Office considered that Article 8(3) CTMR is applicable:

Case No Comment

Decision of 04/05/2009, R 0493/2002-4 – ‘FIRST DEFENSE’ (II)

The Board held that the contested disabling sprays in Class 13 were covered by the proprietor’s non-explosive defense weapons in the nature of an organic irritant packaged in an aerosol (or pressurized spray) canister.

However, it considered that protection did not extend to the contested side arms, ammunition, projectiles. These are goods for which commercial activity from the proprietor cannot be reasonably expected. Side arms and a mmunition are far too different from pepper sprays to be covered by Article 8(3) CTMR given that the opponent markets a very specific product (paras 19 to 24).

In its judgment of 13/04/2011, T-262/09, the GC did not examine the arguments of the parties regarding the similarity of the goods.

Decision of 03/05/2012, R 1642/2011-2 ‘Maritime Acopafi’ (fig. mark)

The Board held that the wording suggests only if the mark applied for is essentially identical to the earlier right, in terms of both signs and goods/services, it can be prohibited. On the other hand, a too- literal reading of that provision would fatally weaken its utility by allowing fraudulent agents to register their principals’ marks by merely making minor modifications or unimportant additions to them. Despite these considerations, however, the provision must apply only where the signs and the goods/services are essentially the same, or largely equivalent (para. 18).

In view of this, the Board upheld OD’s findings that the earlier mark’s use for installation of marine accommodation was fundamentally different from the applicant’s services in Class 42 (scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software).

Decision of 03/08/2010, R 1367/2009-2 ‘Berik’ (fig. mark)

The Board agreed with the Cancellation Division that the cancellation applicant’s goods in Class 25 could not be considered closely related or equivalent in commercial terms to the applicant’s goods in Class 18, leather or imitation leather. The latter are raw materials for producers of goods made of leather or imitation of leather and, thus, target a different public and have different distribution channels from the goods covered by the cancellation applicant’s marks (paras 30 and 31).

It further agreed with the Cancellation Division that the cancellation applicant’s goods in Class 25 could not be considered closely related or equivalent in commercial terms to the applicant’s goods in Class 16 even if, for example, some of the contested goods could be u sed as merchandising items for a l ine of clothing (paras 28-30).

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Case No Comment

Decision of 27/02/2012, B 1 302 530 ‘GEOWEB / NEOWEB’

‘In view of the necessity to effectively protect the legitimate proprietor against unfair practices by its representatives, a restrictive interpretation of Article 8(3) CTMR must be a voided. Therefore, this provision must be applied not only where the respective marks are identical, but also where the mark applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do not substantially affect its distinctiveness.

In line with the aforementioned reasoning, Article 8(3) CTMR does not only cover cases where the respective lists of goods and services are strictly identical, but it also applies where the goods and services in conflict are closely related or equivalent in commercial terms. In other words, what finally counts is that the goods or services of the applicant may be perceived by the public as ‘authorised’ products, the quality of which is still somehow “guaranteed” by the opponent’ (p. 20).

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART C

OPPOSITION

SECTION 4

RIGHTS UNDER ARTICLE 8(4) CTMR

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Table of Contents

1 Introduction................................................................................................ 3

2 Structure of Article 8(4) CTMR ................................................................. 3

3 Conditions of Article 8(4) CTMR............................................................... 5 3.1 Direct right conferred on the opponent .................................................... 5 3.2 Types of rights falling under Article 8(4) CTMR .......................................6

3.2.1 Introduction ..................................................................................................... 6 3.2.2 Non-registered trade marks............................................................................ 6 3.2.3 Other business identifiers ............................................................................... 7

3.2.3.1 Trade names ...............................................................................................8 3.2.3.2 Corporate names.........................................................................................8 3.2.3.3 Domain names ............................................................................................9 3.2.3.4 Titles............................................................................................................9

3.2.4 Geographical indications .............................................................................. 10 3.2.4.1 Earlier rights deriving from EU legislation..................................................10 3.2.4.2 Earlier rights deriving from the laws of Member States .............................11 3.2.4.3 Earlier rights deriving from international agreements ................................12 3.2.4.4. Scope of protection of PGIs.......................................................................13

3.3 Use requirements ..................................................................................... 15 3.3.1 National Standard......................................................................................... 15 3.3.2 European Standard – use in the course of trade of more than mere local

significance ................................................................................................... 15 3.3.2.1 Use in the course of trade .........................................................................16 3.3.2.2 Significance of the use ..............................................................................19

3.4 Earlier right ............................................................................................... 24 3.5 Scope of protection.................................................................................. 25

4 Proof of the Applicable Law Governing the Sign.................................. 25 4.1 The burden of proof ................................................................................. 25 4.2 Means of evidence and standard of proof .............................................. 27

4.2.1 National law .................................................................................................. 27 4.2.2 European Union law ..................................................................................... 29

TABLE ON NATIONAL RIGHTS THAT CONSTITUTE ‘EARLIER RIGHTS’ IN THE SENSE OF ARTICLE 8(4) CTMR ..................................................... 30

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1 Introduction

The relationship between the Community Trade Mark system and national law is characterised by the principle of coexistence. This means that both the Community Trade Mark system and the national laws exist and operate side by side. The same sign can be protected by the same proprietor as a CTM and as a national trade mark in one (or all) of the Member States. The principle of coexistence further implies that the CTM system actively acknowledges the relevance of national rights and their scope of protection. Where conflicts arise between CTMs and national trade marks or other national rights, there is no hierarchy determining that one system prevails over the other; instead, these conflicts apply the principle of priority. If the respective requirements are met, earlier national trade marks or other earlier national rights can prevent registration of, or invalidate a later CTM.

Although the TM Directive and its subsequent implementation have harmonised the laws relating to registered trade marks, no such harmonisation has taken place on an EU scale with regard to non-registered trade marks nor for most other earlier rights of a similar nature. These un-harmonised rights remain completely governed by national laws.

The types of earlier rights which can be relied upon in proceedings before the Office are specified in the CTMR under:

 Article 8(4) CTMR, which restricts the scope of protection in opposition proceedings to earlier non-registered trade marks and other signs used in the course of trade of more than mere local significance;

 Article 53(2)(a)-(d) CTMR, which broadens the scope of possible earlier rights to be relied upon for invalidity proceedings beyond those of Article 8(4) CTMR to also cover other earlier rights, in particular the right to a name, the right of personal portrayal, a copyright and an industrial property right;

 Article 111 CTMR, which complements the range of earlier rights to be relied upon in opposition proceedings by providing that rights which are only valid in particular localities and, thus, do not meet the ‘more than mere local significance’ criterion of Article 8(4) CTMR, can oppose use of a CTM even though these local rights cannot impede its registration.

This part of the Guidelines only deals with the earlier rights falling under Article 8(4) CTMR.

2 Structure of Article 8(4) CTMR

Article 8(4) CTMR reads:

Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign:

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(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Article 8(4) CTMR means that in addition to the earlier trade marks specified in Article 8(2) CTMR, non-registered trade marks and other signs protected at Member State level used in the course of trade as ‘business identifiers’ of more than mere local significance can be invoked in an opposition provided that such rights confer on their proprietors the right to prohibit the use of a subsequent trade mark.

Article 8(4) CTMR does not expressly or exhaustively enumerate the particular rights which can be invoked under this provision, but rather outlines a broad spectrum of rights that might serve as basis for an opposition against a CTM application. Therefore, Article 8(4) CTMR can be regarded as a general ‘catch-all-provision’ for oppositions based on non-registered trade marks and other signs used in the course of trade.

Nevertheless, the broad scope of earlier rights to be relied upon in opposition proceedings under Article 8(4) CTMR is subject to a number of restrictive conditions:, these rights must confer an entitlement to the proprietor to exercise them, they must be of more than local significance, they must be protected by the national law governing them against the use of a subsequent trade mark and the rights must have been acquired prior to the CTMA under the law of the Member State governing that sign.

The ‘more than mere local significance’ requirement aims at restricting the number of potential opposing non-registered rights, thus avoiding the risk of a collapse or paralysis of the CTM system by being flooded with opposing, relatively insignificant rights.

The ‘national protection’ requirement is deemed necessary as the non-registered national rights are not easily identifiable and their protection is not harmonised on an EU level. Consequently, only national law governing the earlier signs may define the scope of their protection.

While the requirements of ‘use in the course of trade’ and ‘use of more than mere local significance’ are to be interpreted in the context of Community law (European standard), national law applies when determining whether a particular right is recognised and protected under the national law, whether its holder is entitled to prohibit the use of a subsequent trade mark, and what conditions need to be met under national law for the right to be successfully exercised.

As a consequence of this dualism, the Office must apply both the relevant provisions of the CTMR and the national law governing the earlier opposing right. In view of the two- tier examination to be applied under Article 8(4) CTMR, this provision, as the link between Community and national law, displays a somewhat ‘hybrid’ nature.

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3 Conditions of Article 8(4) CTMR

The conditions for successfully invoking Article 8(4) CTMR are:

a) the opponent must be the beneficiary of a non-registered trade mark or of another sign used in the course of trade;

b) use of more than mere local significance;

c) acquisition prior to the CTMA under the law of the Member State governing that sign;

d) right to prohibit the use of a subsequent trade mark under the law of the Member State governing that sign.

3.1 Direct right conferred on the opponent

The legal systems of the EU Member States provide various means of preventing the use of later marks on the basis of earlier signs used in the course of trade. However, in order to come within the meaning of Article 8(4) CTMR, the earlier right must be vested in a particular owner or a precise class of user that has a quasi-proprietorial interest over it, in the sense that it can exclude or prevent others from unlawfully using the sign. This is because Article 8(4) CTMR is a ‘relative’ ground for opposition and Article 41(1)(c) CTMR provides that oppositions may be filed only by the proprietors of earlier marks or signs referred to in Article 8(4) CMTR and by persons authorised under the relevant national law to exercise these rights. In other words, only persons having an interest directly recognised by law in initiating proceedings are entitled to file an opposition within the meaning of Article 8(4) CTMR.

For example, in some Member States, the use of a sign may be prohibited if it results in unfair or misleading business practices. In such cases, if the earlier right lacks any ‘proprietorial quality’, it will not fall within Article 8(4) CTMR. It does not matter whether these signs are protected against misleading or unfair use under trade mark law, the law relating to unfair competition, or any other set of provisions. An example in this respect is the German Regulation governing the use of the geographical indication ‘Solingen’ for specific goods (cutlery scissors, knives etc.). This law would not be a proper basis for an opposition under Article 8(4) CTMR because the sign in question lacks any proprietorial quality and, as such, is more public in nature.

Earlier right Case No

A.O. CUBA R0051/2007-4

Where the national law does not confer on a legal entity (whether public or private) a subjective right allowing it to prohibit the use of a subsequent trade mark, the “proprietary requirement” is not met. The Board found that the Spanish law giving effect to the bilateral Agreement between Spain and Cuba for the protection of the appellation of origin “Cuba” was not sufficient to grant such a subjective right (para. 23-27).

In assessing the proprietorship of a sign used in the course of trade, the Office must analyse specifically whether the opponent has acquired rights over the sign ‘in accordance with the national law’ (judgment of 18/01/2012, T-304/09, ‘Basmati’).

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3.2 Types of rights falling under Article 8(4) CTMR

3.2.1 Introduction

When assessing which kind of intellectual property rights can be invoked under Article 8(4) CTMR and which cannot, a European standard applies. The distinction follows from the scheme of the CTMR and, in particular, from the differentiation made between the kinds of earlier signs upon which an opposition may be based under Article 8(4) CTMR and the types of further rights that may be the basis for invalidity under Article 53(2) CTMR. While Article 8(4) CTMR refers to signs (‘non-registered trade mark or … another sign’), Article 53(2) CTMR refers to a broader set of rights: (a) a right to a name; (b) a right of personal portrayal; (c) a copyright; and (d) an industrial property right.

Therefore, although the signs covered by Article 8(4) CTMR fall within the broad category of ‘industrial property rights’, not all industrial property rights are ‘signs’ for the purposes of Article 8(4) CTMR. Since this distinction is contained in the CTMR, the classification of a right under the respective national law is not decisive, and it is immaterial whether the national law governing the respective sign or industrial property right treats both types of rights in one and the same law.

The types of rights falling under Article 8(4) CTMR are:

 ‘non-registered trade marks’; and  ‘other signs used in the course of trade’ which cover:

○ business identifiers such as:

— trade names; — corporate names; — establishment names; — titles of publications or similar works; — domain names;

○ geographical indications.

Most national business identifiers falling within the category of earlier rights within the meaning of Article 8(4) CTMR will be non-registered signs. However, the fact that a sign is also registered in accordance with the requirements of the respective national law does not bar it from being invoked under Article 8(4) CTMR.

3.2.2 Non-registered trade marks

Non-registered use-based trade marks exist in a number of the Member States1 (see the Table at the end of the document for an overview) and are signs that indicate the commercial origin of a product or service. Therefore, they are signs which function as a trade mark. The rules and conditions governing acquisition of rights under the relevant

1 Benelux, Cyprus, Croatia, Estonia, France, Lithuania, Poland, Romania, Slovenia and Spain do not protect unregistered trade marks (unless, for some jurisdictions, they are considered well-known within the meaning of Article 6bis of the Paris Convention).

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national law vary from simple use to use having acquired a reputation. Neither is their scope of protection uniform, although it is generally quite similar to the scope of protection under the provisions in the CTMR concerning registered trade marks.

Article 8(4) CTMR reflects the existence of such rights in Member States and grants the proprietors of non-registered marks the possibility of preventing the registration of a CTMA where they would succeed in preventing use of that CTMA under the relevant national law, by showing that the conditions set by the national law for prohibiting use of the later CTM are satisfied and the other conditions of Article 8(4) CTMR are met.

Example: R 1529/2010-1 ‘Gladiator’, where a non-registered trade mark in the Czech Republic was invoked and R 1446/2006-4 ‘RM2007’, where a non-registered trade mark in Belgium was invoked and the opposition rejected as unfounded because non- registered trade marks are not protected in Belgium.

3.2.3 Other business identifiers

‘Other signs used in the course of trade’ is a broad category that is not enumerated in Article 8(4) CTMR. In order for such signs to come within the ambit of Article 8(4) CTMR, they must have an identifying function, that is, they must primarily serve to identify in trade a business (business identifiers) or a geographical origin (geographical indications). Article 8(4) CTMR does not cover other types of intellectual property rights that are not ‘commercial signs’ – such as patents, copyrights or design rights which do not have a primarily identifying function but which protect technical or artistic achievements or the ‘appearance’ of something.

Some examples of cases dealing with whether a right is a ‘sign’ for the purposes of Article 8(4) CTMR are set out below.

Earlier right Case No

JOSE PADILLA (copyright)

T-255/08

The Court found that copyright cannot constitute a ‘sign used in the course of trade’ within the meaning of Article 8(4) CTMR. It is apparent from the scheme of Article 53 CTMR that copyright is not such a sign. Article 53(1)(c) CTMR provides that a Community trade mark is to be declared invalid where there is an earlier right as referred to in Article 8(4) CTMR and the conditions set out in that paragraph are fulfilled. Article 53(2)(c) CTMR provides that a Community trade mark is also to be declared invalid where the use of such a trade mark may be prohibited pursuant to any ‘other’ earlier right and in particular a copyright. It follows that copyright is not one of the earlier rights referred to in Article 8(4) CTMR.

Earlier right Case No

Dr. No (copyright) T-435/05

In addition, it is clear from Article 8(4) CTMR read in conjunction with Article 53(2) CTMR that the protection provided for by copyright cannot be relied on in opposition proceedings, but only in proceedings for a declaration of invalidity of the Community mark in question (para. 41).

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Earlier rights Case No

and

(Community designs)

B 1 530 875

Designs are a form of intellectual property dealing with the ornamental or aesthetic aspects of an article’s appearance. Designs are deemed to be the result of a creative work which needs to be protected against unauthorised copying or imitation by third parties in order to ensure a fair return on investment. They are protected as intellectual property, but they are not business identifiers or trade signs. Therefore, designs do not qualify as signs used in the course of trade for the purpose of Article 8(4) CTMR.

3.2.3.1 Trade names

Trade names are the names used to identify businesses, as distinguished from trade marks which identify goods or services as produced or marketed by a particular undertaking.

A trade name is not necessarily identical with the corporate name or commercial name entered in a commercial or similar register as trade names can cover other non- registered names such as a sign which identifies and distinguishes a certain establishment. Trade names are protected as exclusive rights in all Member States.

Pursuant to Article 8 of the Paris Convention, trade names enjoy protection without any registration requirement. If national legislation requires registration for national trade names, the respective provision is not applicable by virtue of Article 8 of the Paris Convention with respect to trade names held by a national of another Contracting Party to the Paris Convention. This applies as well in respect of nationals of a member of the WTO Agreement.

As regards the application of Article 8(4) CTMR to trade names, where the trade name is invoked on the basis of the law of one of the Member States where a registration is a condition for the enforcement of rights in a trade name, the Office will apply this requirement where the Member State and the nationality of the opponent are the same, but will not apply this requirement in all other cases, since this would violate the provisions of Article 8 of the Paris Convention.

Examples: R 1714/2010-4 where the Spanish trade name ‘JAMON DE HUELVA’ was invoked.

3.2.3.2 Corporate names

A corporate name or company name is the official designation of an undertaking, in most cases registered in the respective national commercial register.

Article 8(4) CTMR requires that actual use be shown, even if national law vests in the holder of such a name the right to prohibit the use of a subsequent trade mark on the basis of registration alone. However, if under national law registration is a prerequisite for protection, registration must be shown as well. Otherwise, there would be no

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national right that the opponent could invoke.

Examples: judgment of 14/09/2011, T-485/07, ‘O-live (fig.)’ where the Spanish commercial name ‘OLIVE LINE’ was invoked and R 0021/2011-1 where the French company name ‘MARIONNAUD PERFUMERIES’ was invoked.

3.2.3.3 Domain names

A domain name is a combination of typographical characters corresponding to one or several numeric IP addresses that are used to identify a particular web page or set of web pages on the internet. As such, a domain name functions as an ‘address’ used to refer to a specific location on the internet (oami.europa.eu) or an email address (@oami.europa.eu).

Domain names are registered with organisations or commercial entities called ‘domain name registrars’. Although a domain name is unique and may be a valuable commercial asset, a domain name registration per se is not an intellectual property right. Such registrations do not create any form of exclusive right. Instead, ‘registration’ in this context refers to a contractual agreement between a domain name registrant and the domain name registrar.

However, the use of a domain name may give rise to rights that can be the basis for an opposition under Article 8(4) CTMR. This can occur if the use of the domain name means that it is protected as a non-registered trade mark or a business identifier under the applicable national law.

Examples: R 0275/2011-1, where rights based on the use of the German domain name ‘lucky-pet.de’ were invoked; B 1 719 379, where rights based on the use of the French domain name ‘Helloresto.fr’ were invoked; T-321/11 and T-322/11, where rights based on the use of the Italian domain name ‘partidodellaliberta.it’ were invoked and the Court considered that references to this site in the Italian press did not in themselves substantiate its use in the context of a commercial activity.

3.2.3.4 Titles

Titles of magazines and other publications, or titles of similar categories of works such as films, television series, etc. fall under Article 8(4) CTMR only if, under the applicable national law, they are protected as business identifiers.

The fact that the copyright in a title of a work can be invoked under the respective national law against a subsequent trade mark is not material for the purposes of Article 8(4) CTMR. As set out above, whilst a right in copyright may be used to invalidate a CTM under Article 53(2) CTMR, it is only where a title has an ‘identifying’ function and acts as a business identifier that it comes within the scope of Article 8(4) CTMR. Therefore, for such signs to be relied on under Article 8(4) CTMR in the context of opposition proceedings, the national law must foresee a protection which is independent from that recognised by copyright law (judgment of 30/06/2009, T-435/05, ‘Dr. No’, paras. 41-43.)

As with all rights under Article 8(4), the title must have been used in the course of trade. This will normally require that the work to which the title relates must have been placed on the market. Where the title relates to a service (such as a television

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programme), that service must have been made available. However, there will be circumstances where pre-use advertising may be sufficient to create rights, and where such advertising will constitute ‘use’ within the meaning of Article 8(4) CTMR. In all cases, the title must have been used as an indicator of the commercial origin of the goods and services in question. Where a title is used only to indicate the artistic origin of a work, such use falls outside the scope of Article 8(4) CTMR (judgment of 30/06/2009, T-435/05, ‘Dr. No’, 25-31).

Example: R 0181/2011-1 where the magazine title ‘ART’ was invoked.

3.2.4 Geographical indications

Geographical indications are used to designate the origin of goods as being from a particular region or locality. For a general overview on geographical indications see the Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR.

Depending on the context, as described below, the term ‘protected geographical indication’ (PGI) may cover terms such as ‘designations of origin’, ‘appellations of origin’ and equivalent terms, and is used in this chapter to refer to PGIs in general.

PGIs are protected in various ways in the EU (national law, EU law, international agreements) and cover various product areas (such as foodstuffs or handicrafts).

This section identifies the types of PGIs that may serve as a valid basis for oppositions under Article 8(4) CTMR.

3.2.4.1 Earlier rights deriving from EU legislation

At EU level, there is protection for PGIs for the following categories of products:

1. certain foodstuffs and certain non-food agricultural products (pursuant to Regulation No 1151/20122, the ‘Foodstuffs Regulation’);

2. wines and sparkling wines (pursuant to Regulation No 1308/20133, the ‘Wines Regulation’); and

3. spirits (pursuant to Regulation No 110/20084, the ‘Spirits Regulation’).

The nature of the indications covered is broadly the same albeit that the precise definition of terms varies according to the legislation. Earlier rights that are registered or applied for as PGIs under the above regulations (which can even include PGIs from third countries), can constitute a ‘sign used in the course of trade’ under Article 8(4) CTMR and may be a valid basis for an opposition to the extent that they allow the proprietor to prevent use of a subsequent mark. Their ability to prevent use is

2 Replaced and repealed Regulation No 510/2006 which had replaced and repealed Regulation No 2081/92. 3 Replaced and repealed Regulation No 1234/2007 which had integrated, through codification by Regulation No 491/2009, Regulation No 479/2008 which was repealed at the same time. 4 Replaced and repealed Regulation No 1576/89.

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governed by the relevant provisions of the Regulations cited above (Article 13, Article 103(2) and Article 16 of the Foodstuffs, Wines and Spirits Regulations respectively). In this context, it is important to distinguish the latter provisions preventing use from those that prevent registration5 of a trade mark, which are not a basis for opposition under Article 8(4) CTMR.

In order to substantiate its right, the opponent must provide the Office with the necessary facts and evidence regarding the existence of its right. A mere extract of the relevant online EU databases (DOOR, E-Bacchus or E-Spirit-Drinks) or in the case of spirits, an extract of Annex III of the Spirits Regulation, is not sufficient, as they do not contain sufficient data to determine all the relevant particulars of the earlier right (e.g. entitlement of the opponent or goods protected by the PGI).

The opponent must in any event provide the Office with copies of the publication and registration of the PGI in the Official Journal and, if these documents lack information on the opponent’s entitlement, further documents proving its entitlement to file the opposition as proprietor or person authorised under the relevant national law to exercise the right (Article 41(1)(c) CTMR and Rule 19(2) CTMIR). See in this respect decision of 17/10/2013, R1825/2012-4 ‘Dresdner StriezelGlühwein/Desdner Stollen’ para. 37).

The EU system of protection of PGIs for foodstuffs, wines and spirits is exhaustive in nature and supersedes national protection for those goods. This arises from the findings of the Court in the judgment of 08/09/2009, C-478/07 ‘BUD’, paras. 95-129. Here the Court held that the aim of Regulation No 510/2006 (the predecessor of the current Foodstuffs Regulation) was to provide a uniform and exclusive system of protection of PGIs for agricultural products and foodstuffs that superseded national laws for the relevant products6. Although the Court has not specifically pronounced upon the exhaustive nature of the Wines and Spirits Regulations, the same principle must apply because they contain substantively similar provisions to the Foodstuffs Regulation and they have the same purpose for the respective products.

3.2.4.2 Earlier rights deriving from the laws of Member States

Certain PGIs deriving from the laws of Member States may be a basis for opposition under Article 8(4) CTMR. Nevertheless, for the reasons set out above, in the areas of foodstuffs, wines and spirits protection at EU level is exhaustive in nature which means that an opposition under Article 8(4) CTMR cannot be based on national rights in these areas. This is because the EU system of protection comprising the above regulations overrides and replaces national protection of PGIs for foodstuffs, wines and spirits.

Consequently, PGIs for certain foodstuffs7 and certain non-food agricultural products8 (as set out in Annex I of the Treaty on the Functioning of the European Union (TFEU) and Annex I of the Foodstuffs Regulation), wines and grapevine products9 (as set out

5 Articles 14, 102 and 23 of the Foodstuffs, Wines and Spirits Regulations respectively. 6 For additional information, see the Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR. 7 e.g. meat, cheese, pastry, edible oils, vegetables, fruits, beverages made from plant extracts, vinegar (including wine vinegar), unmanufactured tobacco, beer, confectionery. 8 e.g. wool, leather, essential oils. 9 e.g. wine, sparkling wine, liqueur wine, wine must, but not wine vinegar.

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in Annex VII, part 2 of the Wines Regulation) and spirit drinks10 (as set out in Annex II of the Spirits Regulation) that are protected under national laws are not a proper ground of opposition under Article 8(4) CTMR. For the latter products, the opponent must invoke the relevant EU legislation in the notice of opposition.

Nevertheless, where no uniform EU protection is in place for a category of goods (e.g. handicrafts), PGIs that are protected under national laws can be a basis for opposition under Article 8(4) CTMR (e.g. ČESKÝ PORCELÁN / FINE BOHEMIAN CHINA for crystal ware).

3.2.4.3 Earlier rights deriving from international agreements

In order for an opposition under Article 8(4) CTMR to be successful on the basis of a right deriving from any international agreement, the provisions under the international agreement must be directly applicable and they must allow the holder of a PGI to take direct legal action to prohibit the use of a subsequent trade mark.

In the latter respect, international agreements are not always self-executing. This depends on the characteristics of the agreement itself and on how they have been interpreted in the relevant jurisdiction. For example, the Office considers that the provisions of the Lisbon Agreement (in particular Articles 3 and 8) are not self- executing. As expressly indicated by Article 8 of the Lisbon Agreement, it is the relevant national legislation that must determine which type of legal actions may be taken, their scope and whether these legal actions include allowing the proprietor of an appellation of origin to prohibit the use of a subsequent trade mark. Therefore, in such cases, the requisite national legislation must be adduced as this is a necessary component in order for the opponent to prove that the PGI in question can prevent use of the subsequent mark and that the opponent is entitled by the law governing the right to exercise this right.

International agreements entered into by the EU

PGIs deriving from agreements between the EU and third countries can be invoked under Article 8(4) CTMR if the provisions of these agreements vest the PGI in a particular beneficiary or a precise class of users that have direct right of action11.

International agreements entered into by Member States including the Lisbon Agreement12

For the reasons set out in paragraph 3.2.4.2 above, a PGI protected under an international agreement concluded by Member States (either among Members States or with third countries) cannot be invoked as an earlier right under Article 8(4) CTMR if it encroaches upon the exhaustive nature of EU law in the relevant areas (currently foodstuffs, wines and spirits).

10 e.g. grain spirit, wine spirit, fruit spirit, brandy, liqueurs, rum, whisky, gin. 11 PGIs from third countries can also be registered at EU level under the Foodstuffs, Wines and Spirits Regulations. 12Some Member States (Bulgaria, Czech Republic, France, Hungary, Italy, Portugal and Slovakia) are party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 1958 (as revised at Stockholm 1967, and as amended on 28/09/1979). The European Union is not a signatory to the Lisbon Agreement.

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In C-478/07 ‘BUD’, the Court discussed the exhaustive nature of EU law as regards PGIs originating from Member States. In the Office’s interpretation, this also applies a fortiori to third-country PGIs in the relevant product fields which enjoy protection in the territory of a Member State through an international agreement concluded between that Member State and a non-EU-country13.

This equally applies to the Lisbon Agreement. The Lisbon Agreement creates an international registration and protection system for ‘appellations of origin’ (Article 2(1)). The definition of ‘appellations of origin’ for food and beverage products under this agreement is largely equivalent to that of a ‘designation of origin’14 under EU regulations. Therefore, appellations of origin protected in a Member State by virtue of the Lisbon Agreement cannot be a basis for opposition under Article 8(4) CTMR.

The only exceptions in this regard are the following.

 International agreements which cover PGIs which do not relate to foodstuffs, wines or spirits.

 International agreements concluded with third countries by a Member State before its accession to the EU. This is because the obligations arising out of an international agreement entered into by a Member State before its accession to the EU have to be respected. However, Member States are required to take all appropriate steps to eliminate the incompatibilities between an agreement concluded before a Member State’s accession and the Treaty (see Article 307 Treaty Establishing the European Community, now Article 351 TFEU, as interpreted by the Court in its judgment of 18/11/2003, C-216/01 ‘BUD’, paras. 168-172).

 International agreements concluded with a third country by a Member State after its accession to the EU, but before the entry into force of the uniform EU system of protection in the given product area.

As Member States are under obligation to eliminate incompatibilities with EU law, the Office will apply the last two exceptions (which exclusively concern third country PGIs in the fields of foodstuffs, wines or spirits) only when the opponent expressly refers to the exception and supports it by a coherent line of argument and relevant evidence (in particular, concerning the date of entry into force of the cited international agreement in the EU Member State where protection is claimed and its continued validity). General allegations by the opponent (such as merely citing the relevant international agreement) will not be sufficient in themselves for the Office to consider that one of the latter two exceptions applies.

3.2.4.4. Scope of protection of PGIs

The ability of PGIs to prevent use is governed by the relevant provisions of the EU Regulations (Articles 13, 103(2) and 16 of the Foodstuffs, Wines and Spirits Regulations respectively). In this context, it is important to distinguish the latter

13 To which the EU is not a contracting party. 14This term is defined and explained in The Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR.

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provisions preventing use from those that prevent registration15 of a trade mark and which are not a basis for opposition under Article 8(4) CTMR16. Therefore, under Article 8(4) CTMR, a PGI can prevail if the conditions set out in the provisions preventing use are met, these are:

 the contested CTMA exclusively consists of the whole PGI or adds other words or figurative elements (direct or indirect use) for comparable products or, even for non-comparable products, if the use of the PGI exploits the reputation of the protected name17

 the contested CTMA contains or consists of an imitation or of an evocation of the PGI18

 other misleading indications and practices.19

Detailed information on the scope of protection of PGIs protected under the EU legislation is included in the Guidelines, Part B: Examination, Section 4 Absolute Grounds for Refusal and Community Collective Trade Marks, paragraph 2.09 on Article 7(1)(j) CTMR and paragraph 2.10 on Article 7(1)(k) CTMR (e.g. definitions of direct use, comparable products or evocation).

The provisions of the EU Regulations preventing use contemplate situations where a PGI can be invoked against goods or services which do not necessarily fall within the scope of objectionable goods and services under the ex officio examination of absolute grounds, subject to the conditions of the relevant provisions of the corresponding EU regulations. For instance, under Article 13(1)(a), Article 103(2)(a)(ii) and Article 16(a) of the Foodstuffs, Wines and Spirits Regulations respectively, a PGI with repute can be invoked against products and services which would not be ex officio objectionable under absolute grounds.

The scope of protection of PGIs that are protected by regulations other than the abovementioned EU Regulations depends on the relevant provisions.

Nevertheless, either under EU or national legislation, the scope of protection of PGIs cannot exceed what is required in order to safeguard the function of the PGI, the function in question is to designate goods as being from a particular geographic origin and the special qualities connected therewith. Unlike other signs, PGIs are not used to indicate the commercial origin of goods and they afford no protection in this regard. Therefore, where the specification of a CTMA is limited to goods in conformity with the specification of the relevant protected PGI, the function of the PGI in question is safeguarded in relation to those products because the CTMA only covers products from the particular geographic origin and the special qualities connected therewith. Consequently, an opposition against a CTMA which has been appropriately limited will not succeed. See in this regard Article 12(1) of the Foodstuffs Regulation or Article 103(1) of the Wines Regulation.

Where a PGI is invoked under Article 8(4) CTMR, as for all other signs under this article, the opponent must prove that the sign is used in the course of trade of more than mere local significance. The use must be made in accordance with the

15Articles 14, 102 and 23 of the Foodstuffs, Wines and Spirits Regulations respectively. 16 See, in this sense, judgment of 12/06/2007, joined cases T-60/04 to 64/04, ‘Bud’, para. 78. 17Article 13(1)(a), 103(2)(a), 16(1)(a) of the Foodstuffs, Wines and Spirits Regulations respectively. 18Article 13(1)(b), 103(2)(b), 16(1)(b) of the Foodstuffs, Wines and Spirits Regulations respectively. 19Article 13(1)(c) and (d), 103(2)(c) and (d), 16(1)(c) and (d) of the Foodstuffs, Wines and Spirits Regulations respectively.

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essential function of such a sign, namely to guarantee to consumers the geographical origin of the goods and the special qualities inherent in them, but it must also be shown that the sign was used in the course of trade, that is, as a distinctive element which serves to identify an economic activity engaged in by its proprietor (see judgment of 29/03/2011, C-96/09P ‘BUD’, paras. 147 and 149, respectively). Therefore, documents mentioning a PGI exclusively in a non-trade context are not sufficient for the purposes of Article 8(4) CTMR.

3.3 Use requirements

In order to successfully invoke Article 8(4) CTMR in opposition proceedings, the earlier rights must be used. There are two different use requirement standards which must be taken into account:

 National standard  European standard

The two use requirement standards, however, clearly overlap. They must not be viewed in isolation but have to be assessed together. This applies, in particular, to the ‘intensity of use’ under the National standard and ‘use in trade of more than mere local significance’ under the European standard.

3.3.1 National Standard

National standard is relevant as it defines the scope of protection of the earlier rights which are often not easily identifiable, all the more so since their protection is not harmonised on an EU level (see further below paragraph 3.4 on the scope of protection). This standard determines the existence of the national right and the conditions of protection. For non-registered trade marks and business identifiers which do not require registration, use constitutes the only factual premise justifying the existence of the right, including the ascertainment of the beginning of its existence. The National standard also prescribes the intensity of use under the relevant national law which may vary from mere first use in trade to use requiring recognition or reputation.

For example, right to an unregistered trade mark in Denmark is acquired by mere commencement of use of the mark in Danish territory.

In Germany, however, the right to an unregistered trade mark is acquired through use that has led to recognition by the relevant public of it as a trade mark (‘Verkehrsgeltung’). According to case-law distinctive signs require 20 to 25% recognition whereas non-distinctive signs must acquire recognition by 50% of the relevant public.

3.3.2 European Standard – use in the course of trade of more than mere local significance

Under Article 8(4) CTMR, the existence of an earlier non-registered trade mark or of another sign gives good grounds for opposition if the sign satisfies, inter alia, the following conditions: it must be used in the course of trade and the use must be of more than mere local significance.

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The above two conditions are apparent from the very wording of Article 8(4) CTMR and must, therefore, be interpreted in the light of Community law. The common purpose of the two conditions laid down in Article 8(4) CTMR is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite – that is to say, important and significant in the course of trade – from preventing registration of a new Community trade mark. A right of opposition of that kind must be reserved to signs which actually have a real presence on their relevant market (judgment of 29/03/2011, C-96/09 P, ‘BUD’, para. 157).

3.3.2.1 Use in the course of trade

The first requirement under Article 8(4) CTMR is that the sign must be used in the course of trade.

The notion of ‘use in the course of trade’ in accordance with Article 8(4) CTMR is not the same as ‘genuine use’ in accordance with Article 42(2) and (3) CTMR (judgment of 30/09/2010, T-534/08, ‘Granuflex’, paras 24-27). The aims and conditions connected with proof of genuine use of registered Community or national trade marks are different from those relating to proof of use in the course of trade of the signs referred to in Article 8(4) CTMR (judgment of 09/07/2010, T-430/08 ‘Grain Millers’, para. 26, and judgment of 29/03/2011, C-96/09 P, ‘BUD’ para. 143). Therefore, use must be interpreted according to the particular type of right at issue.

The Court of Justice ruled that the ‘use of the sign in the course of trade’ within the meaning of Article 8(4) CTMR refers to the use of the sign ‘in the course of a commercial activity with a view to economic advantage and not as a private matter’ (judgments of 12/11/2002, C-206/01, ‘Arsenal Football Club’, para. 40; of 25/01/2007, C-48/05, ‘Adam Opel’, para. 18; of 11/09/2007, C-17/06, ‘Céline’, para. 17).

However, the Court of Justice also ruled that deliveries made without charge may be taken into account in order to ascertain whether the requirement for use of the earlier right in the course of trade has been met, since those deliveries could have been made in the context of a commercial activity with a view to economic advantage, namely to acquire new outlets (judgment of 29/03/2011, C-96/09 P ‘BUD’, para. 152).

As far as the time of use of the sign is concerned, an opponent must prove that use took place before the filing of the CTM application or the priority date if relevant (see judgment of 29/03/2011, C 96/09 P ‘BUD’, para. 166-168).

Earlier sign Case No

BUD C-96/09 P

The Court discussed whether use which takes place exclusively or to a large extent between the filing of an application for registration and its publication was sufficient to meet the use requirement. One of the parties had argued that only the acquisition of the right had to take place before filing of the CTMA but not its use. The Court applied the same temporal condition as to the acquisition of the right and concluded that use had to take place before the filing of the application. The Court of Justice considered that in view of the considerable period of time which may elapse between the filing of an application for registration and its publication, the obligation of use in the course of trade of the sign before the filing of the application guarantees that the use claimed for the sign concerned is real and not an exercise whose sole aim has been to prevent registration of a new trade mark (paras 166 to168).

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In the case of unregistered signs, the use must be continuous and uninterrupted until the filing of the opposition, since otherwise there is no certainty that the rights in the unregistered sign have not lapsed. In this context, Rule 19(2)(d) CTMIR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) CTMR, the opponent shall provide evidence of its acquisition, continued existence (emphasis added) and scope of protection of that right.

The following is an example of an inter partes case relating to invalidity proceedings. The reasoning and the findings also apply to oppositions, given that Article 8(4) CTMR is a ground that can be invoked both in opposition and in invalidity:

Earlier sign Case No

‘BAMBOLINA’ (non-registered mark in a number of MS)

Cancellation decision 3728 C (confirmed by BoA R 1822/2010-2, and

judgment T-581/11)

The evidence showed use in the course of trade of the non-registered trade mark for three years, not covering the last two years before the date of filing of the invalidity request. The Cancellation Division held that an earlier non-registered sign relied on in an invalidity action must be in use at the time of filing the request. Since for these signs use constitutes the factual premise justifying the existence of the right, the same factual premise must still exist, and be proven, on the date of filing of the invalidity request (paras 25-28 of the Cancellation decision). The Board confirmed the finding of the Cancellation Division, adding that Rules 19(1) and (2)(d) CTMIR state that where an opposition is based on Article 8(4) CTMR, evidence of, inter alia, its ‘continued existence’ must be adduced within the period given by the Office for presenting or completing facts, evidence or arguments in support of the opposition. Failure to prove the existence, validity and scope of protection of the earlier mark or right within that period will lead to the opposition being rejected as unfounded (Rule 20(1) CTMIR). In the Board’s opinion, these Rules apply mutatis mutandis to cancellation proceedings (para. 15 of the BoA decision).

The requirement that the sign be used in the course of trade must, as stated above, be interpreted in the light of Community law. It must be distinguished from the requirements provided for under the applicable national laws which might set specific requirements as far as the intensity of the use is concerned.

The European use requirement as prescribed by Article 8(4) CTMR applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a sign alone, i.e. without any requirement relating to use. The following is an example where the opponent relied on the registration, at national level, of a trade name, but failed to prove that the sign was used in trade:

Earlier sign Case No

‘NACIONAL’ (Portuguese name of establishment) R 693/2011-2

Under Article 8(4) CTMR, the fact that the opponent may, in accordance with the law of Portugal, have acquired exclusive rights plainly enforceable against subsequent trade marks on the basis of the registration of a ‘name of establishment’, does not exempt it from the burden of proving that the sign in question has been used in the course of trade of more than local significance. The mere fact that the sign is registered in accordance with the requirements of the respective Portuguese law is not in itself sufficient for the application of Article 8(4) CTMR (paras 20-26).

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Depending on the applicable national law, an opponent might have to prove not only that the sign relied on is used in the course of trade (this being, as stated, a requirement under Community law), but also that it has been registered with the competent national authorities. It would not be sufficient that the European requirement of ‘use in trade’ is met if the registration requirement is not fulfilled. However, under certain national laws, rights in a company name may be invoked, as long as the company name has been used, prior to the registration of the entity in the companies register. The following is an example where the opponent invoked prior rights in a company name used in the course of trade in Germany that was not registered at the time of filing the contested CTMA:

Earlier sign Case No

‘Grain Millers GmbH & Co. KG’ (German company name) T-430/08

The opponent invoked under Article 8(4) CTMR the company name ‘Grain Millers GmbH & Co. KG’ used in the course of trade in Germany for ‘flour, in particular wheat flour and rye flour’. Therefore, the opponent claimed the name of a GmbH (Gesellschaft mit beschränkter Haftung, ‘limited liablitiy company’ in English). The applicant argued that, according to Article 11(1) German Limited Companies Act (GmbH Gesetz), a GmbH does not exist before its registration and that the opponent was therefore not entitled, in support of its opposition, to rely on its business name, because the company was registered only after the filing of the contested CTM application. The GC took a different view and held that, according to the case- law of the German courts, the right to a business name exists pursuant to Paragraph 5(2) of the Markengesetz from the first use in the course of trade, without the obligation to register (para. 36).

A sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter.

Therefore, the Office will reject an opposition in the absence of actual use of the invoked sign. The following are examples where the opponent failed to meet this basic requirement:

Earlier sign Case No

Octopussy (film title) R 526/2008-4

The opponent merely submitted general information explaining the content of the film, its characters, gross figures, video offers on the internet and advertisements without any details as regards the relevant market. The information as regards turnover is also insufficient since it is too broad a general reference to the activities carried out by the opponent and does not specify either the type of activity or the territories concerned. For the same reason, the figures from a periodical, relating to the box office receipts generated by the film, have no bearing on the use of the sign in Germany. The remaining press articles furnished by the opponent concern subjects which cannot corroborate the use of the sign in the Member States indicated. The licence agreements for merchandising do not constitute any evidence with regard to the use of the sign as a film title. Lastly, the mere fact that the film was a worldwide success cannot substitute the obligation of the opponent to file concrete evidence with regard to the Member States in which it claims protection under Article 8(4) CTMR (para. 26).

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Earlier sign Case No

‘lucky-pet.de’ (German domain name) R 275/2011-1

The opponent invoked under Article 8(4) CTMR the domain name ‘lucky-pet.de’ used in the course of trade in Germany for ‘mats for animals; retail services with respect to pet supplies’. It has not been proven that the domain has been used with more than local significance for the claimed goods and services. The invoices provided and the catalogue only show the internet address www.lucky-pet.de. However, they do not prove that the website www.lucky-pet.de has been visited and, if so, to what extent. It has neither been stated nor proven by any document how many people visited the website and ordered products via email (para. 31).

3.3.2.2 Significance of the use

Rights falling under Article 8(4) CTMR may only be invoked if their use is of more than mere local significance. This requirement applies for all the rights within the scope of Article 8(4) CTMR, that is, both to unregistered trade marks and to other business identifiers. The proprietors of rights the use of which is of mere local significance retain their exclusive rights under the applicable national law pursuant to Article 111 CTMR.

The question whether the use of a non-registered sign is of more than mere local significance will be answered by applying a uniform European standard (see judgment of 18/04/2013, T-506/11, ‘Peek & Cloppenburg’, paras 19, 47-48).

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) CTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (judgment of 24/03/2009, T-318/06 to T-321/06, ‘GENERAL OPTICA’, paras 36-37 and judgment of 30/09/2010, T-534/08, ‘GRANUflex’, para. 19).

The Court of Justice clarified that the significance of a sign cannot be a function of the mere geographical extent of its protection, since, if that were the case, a sign whose protection is not merely local could, by virtue of that fact alone, prevent registration of a Community trade mark, even though the sign might be used only to a very limited extent in the course of trade. The sign must be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory (judgment of 29/03/2011 C-96/09 P ‘BUD’, para. 158-159).

However, it is not possible to establish a priori, in an abstract manner, which part of a territory must be used to prove that the use of a sign is of more than mere local significance. Therefore, the assessment of the sign’s significance must be made in concreto, according to the circumstances of each case.

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Therefore, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to these elements:

a) the intensity of use (sales made under the sign) b) the length of use c) the spread of the goods (location of the customers) d) the advertising under the sign and the media used for that advertising, including

the distribution of the advertising.

In the following examples, both the geographic and the economic dimension of use of the sign were found to meet the standards:

Earlier sign Case No

GLADIATOR (non-registered trade mark in the Czech Republic) R 1529/2010-1

The around 230 invoices are sufficient to conclude that the sign ‘GLADIATOR’ has been used in the course of trade for ‘all terrain vehicles’. They are issued to the opponent’s clients in Czech cities such as ‘Praha’, ‘Kraslice’, ‘Dolnì Lánov’, ‘Pelhrimov’, ‘Opava’, ‘Bozkov’, ‘Plzen’ and many other Czech cities which cover many different areas of the Czech Republic. Furthermore, the catalogues and the magazines ‘4X4 Style’ from 2007 are written in Czech and it is very likely that they are distributed in different venues within the Czech Republic. The documents such as the list of distributors, catalogues and magazines support the findings that the sign has been used in the course of trade (paras 22-33).

Earlier sign Case No

‘FORGE DE LAGUIOLE’ (French company name)

R 181/2007-1 (appealed T-453/11)

The company name ‘FORGE DE LAGUIOLE’, which the invalidity applicant adopted in 1994, appears on all the documents supplied, in particular on the articles of association and on the extract from the company’s certificate of registration, on the company’s letterhead, on the 1998 price lists and on the correspondence and invoices, dated from 1998, sent to addressees throughout France. The very rapid expansion of the invalidity applicant’s activities and its sales network, as well as its sales turnover, is proved by the documents filed. From the list of customers for 2001 it is clear that the applicant had gained a clientele covering the whole of the French territory. This finding is also confirmed by the invoices produced, made out to customers all over France as well as in other European countries. Finally, the fact is established that the company is mentioned in a number of articles both in the French press and in the European and international press (paras 52-68).

Earlier sign Case No

‘PORTO’ (Portuguese appellation of origin)

Opposition B 998 510 (confirmed by the BoA in R 1101/2009-2

The evidence filed, and the amount and content of the legislation, regulation and registration certificates indicate that Port wine has been and is being used as an appellation of origin for wine. It is clear from the evidence in its totality that the significance of the appellation of origin is not merely local, but rather has an international impact, as reflected in its history and its use as a tool to attract tourists. The promotion of the appellation of origin has taken place, among others, through the establishments ‘SOLAR DO VINHO DO PORTO’ in Lisbon and Oporto, as well as through the ‘PORT WINE ROUTE’, in the Douro region. Taking this into consideration, the Office finds that the opponent has proved that it has used its appellations of origin in the course of trade and that the use is of more than mere local significance.

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Earlier sign Case No

BRADBURY (non-registered trade mark in the UK) R 66/2008-2

As regards goodwill of the mark, the BoA held that the evidence submitted by the opponent was sufficient to prove that the BRADBURY non-registered sign enjoyed goodwill: 1) The invoice evidence shows sales of a range of goods to various entities in the UK and in other countries. 2) The amounts of those invoices vary from a little over GBP 100 to several thousand pounds sterling. This evidence proves sales of products bearing the earlier non-registered mark to various entities. 3) The declarations and market survey also demonstrate that the sign has enjoyed a degree of recognition among the relevant public for the right holder’s goods. 4) The fact that the sign appears in a number of catalogues and advertisements and that after sales service centres are located in various major towns and cities throughout the UK demonstrates that the trade mark has been brought to the attention of a wide public in terms of geographic spread (paras 31-33).

Earlier sign Case No

‘GOLDEN ELEPHANT fig.’ (non-registered trade mark in the UK) T-303/08

The party relying on the earlier non-registered trade mark had sold rice consistently under the sign since 1988, i.e. for a period of eight years prior to the date on which the applicant filed the application for the contested Community trade mark. The quantity of rice sold – between 42 and 84 tonnes per year from 1988 to 1996 – cannot be regarded as totally insignificant. The mere fact that the party’s market share was very small in comparison with the total amount of rice imported into the United Kingdom is not sufficient to justify a finding that those rice sales were below the de minimis threshold. In that context, it should be observed that the courts in the United Kingdom are very unwilling to assume that a business can have customers but no goodwill. ‘Even if it were to be assumed that that goodwill had to be regarded as low on account of the limited quantities of the sales, it cannot, on any view, be regarded as non- existent’ (paras 112-116).

As far as the of the use of the sign is concerned, in general, neither the territory of a city alone, even a big one, is of more than mere local significance, and nor is a regional district or province. It will depend on the circumstances of the case (see examples below). The leading judgment in this respect is the one rendered by the General Court in the General Optica case, where use of the sign was confined to a specific locality and was, therefore, insufficient to meet the prescribed requirements:

Earlier sign Case No

Generalóptica (Portuguese establishment name) Joined Cases T-318/06 to T-321/06

It is not apparent from the evidence provided by the opponent that the significance of the sign relied on in the present case is more than merely local within the meaning of Article 8(4) CTMR. As the Board of Appeal stated in paragraph 33 of the contested decisions, it is apparent from the documents submitted by the opponent that at the time when registration of the first two Community trade marks was applied for, the sign in question had been used for almost 10 years merely to designate a business establishment open to the public in the Portuguese town of Vila Nova de Famalicão, which has 120 000 inhabitants. In spite of its explanations at the hearing, the applicant did not provide any evidence of recognition of the sign by consumers or of its business relationships outside the abovementioned town. Likewise, the applicant has not shown that it had developed any advertising activity in order to ensure that its business establishment was promoted outside that town. It must therefore be held that the business establishment name Generalóptica is of mere local significance within the meaning of Article 8(4) CTMR (para. 44).

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Earlier sign Case No

FORTRESS FORTRESS INVESTMENTS

FORTRESS INVESTMENT GROUP (non-registered trade marks in the UK)

R 354/2009-2

R 355/2009-2

The fact that the invalidity applicant was involved in the acquisition, lease-back and management of nationwide property portfolios of major UK institutions and companies proves that the use was of more than mere local significance. The fact that use is limited to London is relevant in the sense that London is the seat of nearly all governmental institutions and bodies and home to the City of London, one of the leading financial centres of the world. The economic dimension of the sign’s significance was important since by mid-2000 the invalidity applicant had already an equity capital under management in excess of US$1 billion. Furthermore, the group of addressees among which the sign was known is significant since it included major players in the financial field and UK public institutions. The exposure given to the sign was also significant, cf. the national and specialised press coverage. Therefore, use in the course of trade was of more than mere local significance (paras 49-51).

The notion that the use in trade of the sign relied on must be proven in the territory of the Member State/s where protection is sought is not incompatible with use of the sign in connection with cross-border commercial transactions:

Earlier sign Case No

GRAIN MILLERS (German business name) T-430/08

The use of a business name in the context of the importation of goods from another State (in this case, documents of the transaction concluded by opponent concerning the import of wheat from Romania to Germany) is indeed use in the context of a commercial activity with a view to economic advantage, since import-export constitutes a normal, everyday activity of an undertaking, necessarily involving at least two States (para. 41).

The following are examples where the opponent failed to prove that the economic dimension of the use of the signs concerned was sufficient to meet the prescribed legal requirements:

Earlier sign Case No

BUD (appellation of origin)

T-225/06 RENV, T-255/06 RENV, T-257/06 RENV, T- 309/06 RENV

Four very small invoices for only three cities, without any advertisements, did not meet the requirement for use in the course of trade of a sign of more than mere local significance (para. 56). The same conclusion applied to Austria since the GC found that use was limited to deliveries of 12-25 hectolitres per year, for a marginal turnover (around EUR 1 200), almost exclusively in Vienna (paras 59-61).

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Earlier sign Case No

BRIGHTON (non-registered mark in several MS) R 408/2009-4

The sales chart provided by the opponent shows that the sale activities in the Member States concerned were not consistent over time to the extent that for certain years no sales at all appear to have taken place and that for others the sales revenue was very low indeed. Therefore, the sales figures show that the opponent was not able to maintain an intensity of use of the signs over three consecutive years. It is unlikely in those cases that the public was able to memorise the mark as an indication of origin. The opponent did not submit any evidence relating to the advertising and promotion of the marks invested in the concerned Member States, or other material showing that the signs in question had established themselves in the marketplace to such an extent as to justify the acquisition of exclusive rights in non- registered trade marks (paras 12-21).

Earlier sign Case No

(Greek non-registered mark)

R 242/2010-1

Although the documents confirm the geographical extent of the trade mark to Greece, the evidence regarding the extent of time of the alleged use is clearly insufficient. The last dated document is from 1997, i.e. seven years before the contested application was submitted. Moreover, the most recent documents in which the trade mark ‘ESKIMO’ can be seen are the invoices dating from 1991 to 1994. They only reflect the sales of a little less than 100 units throughout these four years, which cannot be deemed sufficient to prove the use of the mark as a business identifier by the opponent (paras 27-28).

Earlier sign Case No

Up Way Systems – Representaçoes Unipessoal LDA (Portuguese company name) R 274/2012-5

Three invoices, addressed to companies in the Porto region of Portugal, for a total sales amount of EUR 16 314, are not sufficient to show that the sign was used in the course, considering the price level of building materials and building services in general (paras 20-23).

Use of a sign relied on under Article 8(4) CTMR must be made in accordance with the essential function of such a sign. This means that if an opponent relies on a non- registered trade mark, proof of use of the sign as a company name would not be sufficient to substantiate the earlier right.

The following is an example where the evidence shows use of a sign whose function does not correspond to that of the sign relied on:

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Earlier sign Case No

JAMON DE HUELVA (Spanish trade name) R 1714/2010-4

The proof furnished in order to substantiate the use of ‘Jamón de Huelva’ almost exclusively relates to the designation of origin ‘Jamón de Huelva’. Designations of origin are very different legal concepts from trade names, as, instead of identifying a particular commercial origin, they are geographical indications relating to an agricultural or food product of which the quality or characteristics are fundamentally or exclusively due to the geographical environment in which they are produced, processed or prepared. The opposition based on the use in Spain of the trade name ‘Jamón de Huelva’ must be dismissed in view of the fact that the proof furnished does not relate to this legal concept and does not identify a specific commercial activity, but instead the activities relating to a designation of origin and the Supervisory Council thereof (paras 34-37).

The requirement that the sign must be used in trade for its own particular economic function does not exclude that the same sign might be used for several purposes.

It is common market practice to also use company or trade names as trade marks, either alone, or together with other product identifiers. This is the case when use of a ‘house mark’ is concerned, that is, an indication which usually coincides with the manufacturer’s company or trade name and which not only identifies the product or service as such, but also provides a direct link between one or more product/service lines and a specific undertaking.

Therefore, depending on the specific circumstances of the case, in a case where an opponent relies on a non-registered trade mark, the use of the same sign as a company name or trade name may well also accomplish the function of indicating the origin of the goods/services concerned (thus, a trade mark function), as long as the sign is used in such a way that a link is established between the sign which constitutes the company or trade name and the goods marketed or the services provided (see, by analogy, judgment of 11/09/2007, C-17/06 ‘CELINE’ paras 22-23).

3.4 Earlier right

The right invoked under Article 8(4) CTMR must be earlier than the CTM application. In order to determine which of the conflicting rights is earlier, the relevant dates on which the rights were obtained must be compared.

 For the CTM application, this is the filing date or any priority date validly claimed (hereinafter the ‘CTM date’). Seniority claims, even if they relate to the Member State where the other earlier right is claimed to exist, are not relevant.

 As regards the right falling under Article 8(4) CTMR, the relevant date of acquisition of exclusive rights under the national law is decisive (see judgment of 07/05/2013, T-579/10 ‘makro’, where the Court confirmed the Board’s rejection of evidence submitted by the invalidity applicant, which related to periods subsequent to the owner’s application for the CTM (para. 70).

Where under the national law mere use is sufficient, this must have begun before the CTM date. Where recognition in the trade or reputation are required, these must have

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been acquired before the CTM date. Where these conditions are fulfilled only after the CTM date, the opposition will have to be rejected.

3.5 Scope of protection

Earlier rights falling under Article 8(4) CTMR are protected only if they confer on their proprietors under the applicable law the right to prohibit the use of a later trade mark.

This requires a finding that under the applicable national law rights of the type involved, in the abstract, are exclusive rights enforceable by means of an injunction vis-à-vis later marks and a finding that in the actual case under consideration the conditions for obtaining such injunctive relief, if the mark that is the subject of the opposed CTM application were used in the territory in question, are present (scope of protection). Both questions have to be answered in accordance with the applicable law. The Office will apply the laws of the Member States, Community law or International agreements.

For many, if not most, of the rights falling under Article 8(4) CTMR, the prerequisites of national regulations are quite similar to those applied in conflicts between trade marks which Office examiners are familiar with, namely, likelihood of confusion, or damage to reputation or distinctiveness.

For example, unregistered marks are generally protected against subsequent marks in the event of a likelihood of confusion and, thus, in accordance with the same criteria that are applicable to conflicts between registered marks, namely, identity or similarity of the signs, identity or similarity of the goods or services, etc. In these cases, the criteria developed by the courts and by the Office for applying Article 8(1) CTMR may easily be transported into Article 8(4) CTMR, unless the party can provide relevant case-law of the national courts proving a different approach.

Where the applicable national law provides protection for unregistered trade marks, which is different from that found in Article 8(1) CTMR, the scope of protection of the earlier right invoked follows from national law. If, for example, the applicable national law grants protection to unregistered marks also for dissimilar goods and services under certain conditions, the same protection will be granted under Article 8(4) CTMR.

4 Proof of the Applicable Law Governing the Sign

4.1 The burden of proof

According to Article 76(1) CTMR, in all inter partes cases, the burden is on the party making a particular claim or allegation to provide the Office with the necessary facts and arguments in order to substantiate the claim. Unlike other grounds in Article 8 CTMR, Article 8(4) CTMR does not specify the conditions governing the acquisition and scope of protection of the earlier right invoked. It is a framework provision where the particulars of the applicable law must be provided by the opponent.

Rule 19(2)(d) CTMIR provides that if an opposition is based on an earlier right within the meaning of Article 8(4) CTMR, the opponent shall provide evidence of its acquisition, continued existence and scope of protection.

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It follows from the law as interpreted by the Court that the opponent must provide the relevant national law and show that it would succeed under that national law in preventing the use of a subsequent trade mark:

In that regard, it should be observed that Article 8(4)(b) [CTMR] lays down the condition that, pursuant to the law of the Member State governing the sign relied on under Article 8(4), that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Furthermore, in accordance with Article 74(1) of Regulation 40/94 [now Article 76(1) CTMR], the burden of proving that that condition is met lies with the opponent before OHIM.

In that context and in relation to the earlier rights relied on … regard must be had, in particular, to the national rules advanced in support of the opposition and to the judicial decisions delivered in the Member State concerned and that, on that basis, the opponent must establish that the sign concerned falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited.

(See judgment of 29/03/2011, C-96/09 P ‘BUD’, paras 188-190.)

The Court held that in applications for a declaration of invalidity brought under Article 53(2) CTMR, it is for the party who seeks to rely on an earlier right protected under national law

to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law.

(See judgments of 05/07/2011, C-263/09 P, ‘Elio Fiorucci’, para. 50 and 27/03/2014, C-530/12 P, ‘Representation of a hand’, para. 34.)

Although these judgments referred to invalidity proceedings under Article 53(2) CTMR, since Article 8(4) also concerns the application of earlier rights protected under European Union legislation or under the law of the Member State governing the sign at issue, the cited case-law also applies to oppositions brought under Article 8(4) CTMR.

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence. It may also be particularly useful to submit evidence of relevant case-law and/or jurisprudence interpreting the law invoked.

The Office must effectively assess the applicability of the ground for refusal invoked. In order to ensure the correct application of the law invoked, the Office has the power to verify, by whatever means it deems appropriate, the content, the conditions governing the application and the scope of the provisions of the applicable law relied upon by the opponent (see judgment of 27/03/2014, C-530/12 P, ‘Representation of a hand’, paras 44-46), while respecting the parties’ right to be heard. If, after verifying the evidence submitted, the Office is of the opinion that the parties’ proposed interpretation or application of the law invoked was inaccurate, it can introduce new and/or additional

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elements. In order to respect the parties’ rights to be heard, the Office will invite the parties to comment on these elements, where appropriate.

This power of verification is limited to ensuring the accurate application of the law relied upon by the opponent. It does not therefore discharge the opponent from the burden of proof and it cannot serve to substitute the opponent in adducing the appropriate law for the purposes of its case (see decision of 02/06/2014, R 1587/2013-4 ‘GROUP’, para. 26 and decision of 30/06/2014, R 2256/2013-2 ‘ENERGY’, para. 26).

4.2 Means of evidence and standard of proof

Pursuant to Article 8(4) CTMR, the applicable law may be the law of a Member State or European Union law.

4.2.1 National law

As regards national law, the opponent must provide:

a) the provisions of the applicable law:

 on the conditions governing acquisition of rights (whether there is a requirement of use and, if so, the standard of use required; whether there is a registration requirement, etc.); and

 on the scope of protection of the right (whether it confers the right of prohibition of use; the injury against which protection is provided, e.g. likelihood of confusion, misrepresentation, unfair advantage, evocation).

b) particulars proving fulfilment of the conditions:

 of acquisition (entitlement; earlier acquisition; whether it is in force; evidence of use if use-based; evidence of registration if registration-based, etc.); and

 of the scope of protection (facts, evidence and/or arguments that the requirements laid down by the applicable law for a prohibition of use are met, e.g. the nature of the goods, services or business activity protected by the earlier right and their relation with the contested goods or services; a cogent argument showing that there is a risk of injury).

First, as regards the provisions of the applicable law (see point a) above), the opponent must provide the reference to and content of the applicable law invoked. The opponent must provide the reference to the relevant legal provision (article number and the number and title of the law) and the content (text) of the legal provision either in its submission or by highlighting it in another publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision.

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As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation. However, a mere translation of the applicable law does not itself constitute proof and cannot substitute the original; therefore, the translation alone is not considered sufficient to prove the law invoked. See Rule 19(2)(d) CTMIR, which requires evidence to be submitted and Rule 19(3) CTMIR, which requires translations be submitted within the time limit specified for submitting the original document.

Where the opponent seeks to rely on national case-law or jurisprudence interpreting the law invoked, it must provide the relevant information in sufficient detail (e.g. a copy of the decision invoked or excerpts from the legal literature) and not merely by reference to a publication. The translation rules apply equally to that evidence.

Second, as regards the particulars proving fulfilment of the conditions of the applicable law (see point b) above), apart from providing appropriate evidence of acquisition of the right invoked, the opponent must submit evidence that the conditions of protection vis-à-vis the contested mark are actually met and, in particular, put forward a cogent line of argument as to why it would succeed in preventing the use of the contested mark under the applicable law. Merely providing the applicable law itself is not considered sufficient, as it is not up to the Office to make the relevant argument on behalf of the opponent.

Furthermore, in an opposition under Article 8(4) CTMR, what matters is whether the relevant provisions of the law conferring on the opponent the right to prohibit the use of a subsequent trade mark would apply to the contested mark in the abstract, and not whether the use of the contested mark could actually be prevented. Therefore, the applicant’s argument in defence that the opponent had not hitherto invoked or had not hitherto been able to prevent the actual use of the contested mark in the relevant territory cannot succeed (see judgment of 29/03/2011, C-96/09 P ‘BUD’, paras 191 and 193).

At the end of this Section of the Guidelines, there is an overview Table with the essentials of national laws applicable in the Member States. It is included in these Guidelines for information purposes only. As this table contains a description of the legal provisions for information purposes only, merely referring to the table does not discharge the opponent from the duty of proving the relevant law governing the sign that confers on it the right to prohibit the use of a later trade mark, as described above (see decision of 22/01/2013, R 1182/2011-4, ‘Crown Lounge (fig. mark)’, paras 48-50).

Based on the above, the Office will reject the opposition if:

 the opponent invokes a right but does not include a reference to any specific national law and/or legal provision protecting that right (e.g. the opponent only indicates that the opposition is based on a commercial designation in Germany or that the opposition based on a commercial designation in Germany is protected under DE-TMA); or

 the opponent provides a reference to the applicable national law and legal provision(s) but the reference is not complete: the legal provision only indicates the conditions governing the acquisition of the right but not the scope of protection of the right (or vice-versa) (e.g. the opponent indicates that the opposition is based on a commercial designation in Germany protected under Article 5 DE-TMA, which establishes the conditions for acquisition of the right, but

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the reference to the conditions governing the scope of protection, Article 15 DE- TMA, is missing); or

 the opponent provides the reference to the relevant legal provision but does not provide the content (text) of the legal provision (e.g. the opponent’s submission refers to the DE-TMA but does not include the content of the law); or

 the opponent provides the content of the legal provision only in the language of the proceedings but not in the original language (e.g. the language of the proceedings is English but the text of the DE-TMA is submitted only in English, not in German); or

 the opponent does not provide any or sufficient evidence of the acquisition of the right invoked or does not provide arguments as to why it fulfils the conditions governing the scope of protection (e.g. the opponent refers to the relevant legal provisions and provides their content both in the original language and translated into the language of the proceedings, but does not provide any or sufficient evidence of the acquisition of protection or does not state whether it fulfils the conditions of the scope of protection).

4.2.2 European Union law

The above requirements also apply to European Union law, except that the opponent is not obliged to provide the content (text) of the law invoked. However, the opponent has to provide particulars proving the fulfilment of the conditions under the relevant provisions of European Union law (point b) above).

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TABLE ON NATIONAL RIGHTS THAT CONSTITUTE ‘EARLIER RIGHTS’ IN THE SENSE OF ARTICLE 8(4) CTMR

FOR INFORMATION PURPOSES20

Table of Contents 1 Benelux..................................................................................................... 34 2 Bulgaria .................................................................................................... 35 3 Czech Republic........................................................................................ 36 4 Denmark ................................................................................................... 37 5 Germany................................................................................................... 38 6 Estonia...................................................................................................... 40 7 Ireland....................................................................................................... 41 8 Greece ...................................................................................................... 42 9 Spain......................................................................................................... 44 10 France....................................................................................................... 45 11 Croatia ...................................................................................................... 46 12 Italy ........................................................................................................... 47 13 Cyprus ...................................................................................................... 48 14 Latvia ........................................................................................................ 49 15 Lithuania................................................................................................... 50 16 Hungary.................................................................................................... 50 17 Malta ......................................................................................................... 51 18 Austria ...................................................................................................... 51 19 Poland....................................................................................................... 53 20 Portugal .................................................................................................... 54 21 Romania ................................................................................................... 56 22 Slovenia.................................................................................................... 57 23 Slovakia .................................................................................................... 57 24 Finland...................................................................................................... 58 25 Sweden..................................................................................................... 60 26 United Kingdom....................................................................................... 61

20 The content of the Table is largely based on information and feedback from trade mark offices and user associations in 2013/2014. However, it is not a legal source and is made available for information purposes only. It may not contain the latest legislative developments or an exhaustive list of all national rights that can be invoked under Article 8(4) CTMR.

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1 Benelux

1.1 Unregistered trade marks

Unregistered trade marks (TMs) are not recognised under the uniform Benelux Convention on Intellectual Property (BCIP).

1.2 Other signs used in the course of trade

For the Benelux territory each state must be considered separately.

1.2.1 Belgium

Trade name (nom commercial)/Company name (dénomination sociale)

Article 2.19 BCIP Article 95 of ‘Loi du 6 avril 2010 relative aux pratiques du marché et à la protection du consommateur’ Article 1382 of the ‘Code Civil’ (Civil Code)

Conditions for protection

Trade name is acquired by its first use in trade. Protection is limited to the geographical area where the trade name or company name is used.

Company name is acquired, in principle, from the date of the establishment of the company. Protection extends to the whole national territory.

Rights conferred

Right to prohibit use of subsequent (registered) trade marks.

1.2.2 Luxembourg

Trade name (nom commercial)/company name (dénomination sociale)

Article 2.19 BCIP Article 14 of ‘Loi du 30 juillet 2002 réglementant certaines pratiques commerciales, sanctionnant la concurrence déloyale et transposant la directive 97/55/CE du Parlement Européen et du Conseil modifiant la directive 84/450/CEE sur la publicité trompeuse afin d’y inclure la publicité comparative’

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Rights conferred

Right to prohibit use of subsequent (registered) trade marks.

1.2.3 Netherlands

Trade name

Article 2.19 BCIP Law of 5 July 1921 on trade names (Handelsnaamwet) Article 6:162, Dutch Civil Code (Burgerlijk Wetboek)

Conditions for protection

Right is acquired by the first use of the trade name in trade. Protection is limited to the geographical area where the trade name is used. Trade names may be registered voluntarily with the Trade Register at the Chamber of Commerce but doing so does not confer any rights on the owner. There is no particular requirement that the trade name be distinctive and non-descriptive.

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of subsequent (registered) trade marks. (b) Likelihood of confusion must be found.

2 Bulgaria

2.1 Unregistered trade marks

Unregistered trade marks (TMs) are protected in Bulgaria in two ways.

Unregistered TMs

Article 12(6) Bulgarian Trade Mark Law on Marks and Geographical Indications (2010)

Conditions for protection

The TM must have been used in the course of trade in the territory of Bulgaria prior to the filing date of the contested trade mark.

Rights conferred (a) and conditions (b)

(a) Right to prohibit registration of a subsequent trade mark. (b) The subsequent trade mark must be identical or similar and must cover identical

or similar goods and/or services.

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Well-known TMs

Article 12(2)7 Bulgarian Trade Mark Law on Marks and Geographical Indications (2010)

Conditions for protection

The TM must be well-known in the territory of Bulgaria within the meaning of Article 6bis of the Paris Convention prior to the filing date of the contested trade mark.

Rights conferred (a) and conditions (b)

(a) Right to prohibit registration of a subsequent trade mark. (b) The subsequent trade mark must be identical or similar and must cover identical

or similar goods and/or services.

2.2 Other signs used in the course of trade

Other signs used in the course of trade are not included by Bulgarian trade mark law as prior rights that could form a basis for opposition.

3 Czech Republic

3.1 Unregistered trade marks

Unregistered trade marks are protected in the Czech Republic:

Article 7(1)(g) of the Czech Trade Marks Act (CZ-TMA).

Conditions for protection

Unregistered signs that have acquired distinctiveness through use in the course of trade of more than mere local significance prior to the filing of the contested application.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) Signs must be identical or similar (interpreted as likelihood of confusion) and

must cover identical or similar goods and/or services. Scope of protection is identical to that of a Czech registered mark.

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3.2 Other signs used in the course of trade

Article 7(1)(g) CZ-TML

Trade names and other related signs (e.g. names of non-commercial organisations)

Conditions for protection

These names/signs must have acquired distinctiveness through use in the course of trade of more than mere local significance prior to the filing of the contested application.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) Signs must be identical or similar (interpreted as likelihood of confusion) and

must cover identical or similar goods and/or services. Scope of protection is identical to that of a Czech registered mark.

4 Denmark

4.1 Unregistered trade marks

Unregistered trade marks (TMs) are protected in Denmark:

§ 3(1)(ii) of the Danish Trade Mark Act (DK-TML) § 4(1), (2) and § 15(4)(ii) DK-TML

Conditions for protection

Rights to an unregistered TM are acquired by starting to use the TM in Denmark.

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of subsequent (registered) TMs. (b) The unregistered TM must continue to be used for the goods and/or services for

which it was first used. The scope of protection is the same as for Danish registered TMs, i.e. corresponding to Article 9(1)(a), (b) and (c) CTMR.

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4.2 Other signs used in the course of trade

Company names

The term ‘company name’ is to be interpreted broadly and covers not only private companies such as private firms, limited liability companies, other commercial companies and secondary trade names but also foundations, unions, associations, museums and public institutions.

§ 18 Danish Marketing Practices Act § 2(ii) Danish Companies Act § 6(ii) Consolidated Act on Certain Commercial Undertakings

Conditions for protection

Company name protection does not require registration. However, the person concerned must have legal title to the company name.

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of subsequent (registered) trade marks. (b) Signs must be identical or similar.

Signs used in the course of trade such as business names and shop facades

The term ‘signs used in the course of trade’ is to be interpreted broadly and, according to Danish law, covers any commercial name or symbol that can serve as a connecting link between a business and its customers/users, including, inter alia, business names and shop facades.

§ 18 Danish Marketing Practices Act

5 Germany

5.1 Unregistered trade marks

§ 4 No 2 German Trade Mark Act (DE-TMA), § 12, 14 DE-TMA

Conditions for protection

Protection is acquired through use leading to recognition by the relevant public as a trade mark (‘Verkehrsgeltung’) (§4 No 2 DE-TMA). According to case-law, 20 to 25% recognition by the relevant public is normally sufficient, rising to 50% or more if a sign is not distinctive.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 36

FINAL VERSION 1.0 01/08/2015

Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of a subsequent trade mark if recognition is established in the whole of Germany, i.e. not if recognition is only established for a particular town or region (§§ 12, 14 DE-TMA).

(b) The same as for registered German trade marks, i.e. protection corresponds to Article 9(1)(a), (b) and (c) CTMR (§ 14(2) No 1, 2 and 3 DE-TMA).

5.2 Other signs used in the course of trade

§5(1), (2), (3) DE-TMA

Commercial designations (‘geschäftliche Bezeichnungen’) is a broad category that includes the following.

Company symbols (‘Unternehmenskennzeichen’) are signs used in the course of trade as a name, company name or special designation of a business operation or enterprise. Business symbols and other signs that are intended to distinguish one business operation from others and are regarded as symbols of the business operation by the relevant public are deemed equivalent to the special designation of a business operation.

A name or firm is a trader’s official or officially registered designation. A business symbol is a sign used by a trader to identify its business or undertaking as such, which functions as the name of the business or enterprise.

Titles of works are the names or special designations of printed publications, cinematic works, music works, stage works or other comparable works. This can be an individual work, a series of works, or a periodical publication. This also includes titles of radio or television series, computer games and video games, possibly also computer programs. It is not required that the work designated by the title is protected under copyright law.

Conditions for protection

Company symbols – If the sign is inherently distinctive, protection is acquired through use in the course of trade as a company symbol. According to case-law the required degree of inherent distinctiveness is low. ‘Use in the course of trade as a company symbol’ covers every external business activity in Germany aimed at long-term commercial activity. If the sign is not inherently distinctive, protection is acquired through recognition as a sign of the undertaking by the relevant public (‘Verkehrsgeltung’).

Business symbols and other signs for distinguishing business operations – Protection is acquired through recognition as a sign of the undertaking by the relevant public.

Titles of works: if the title of work is inherently distinctive, acquisition through use in the course of trade, i.e. normally as from the appearance of the work. The required degree of inherent distinctiveness is low. If the work title is not inherently distinctive, acquisition of the right through market recognition ("Verkehrsgeltung").

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 37

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Rights conferred (a) and conditions (b)

(a) Right to prohibit use of a subsequent trade mark. (b) Likelihood of confusion (§ 15(2) DE-TMA); in the case of a business designation

with reputation, if use would take unfair advantage of, or would be detrimental to, the distinctive character or repute of a commercial designation (§ 15(3) DE-TMA).

6 Estonia

6.1 Unregistered trade marks

Unregistered trade marks are not protected under Estonian law unless the marks are considered to be well-known in Estonia within the meaning of Article 6bis of the Paris Convention.

6.2 Other signs used in the course of trade

Business names

Article 10(1)(4) of the Estonian Trade Mark Act (EST-TMA)

Conditions for protection

Entry in the commercial register prior to the filing date of the application, the date of international registration or the priority date. Protection for a business name is acquired from the date of entry in the commercial register.

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of subsequent (registered) trade marks. (b) Signs must be identical or similar and the area of activity for which a notation has

been made in the commercial register must include the goods and/or services for which the contested trade mark is used or is going to be used (designates).

Names of proprietary medicinal products

Article 10(1)(5) EST-TMA

Conditions for protection

The names must be registered in Estonia prior to the filing date of the trade mark application, the date of international registration or the date of priority.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 38

FINAL VERSION 1.0 01/08/2015

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of subsequent (registered) trade marks. (b) The contested sign must be identical or confusingly similar to the name of a

proprietary medicinal product registered in Estonia and the goods for which the trade mark is used or is going to be used must belong to the field of medicine.

7 Ireland

7.1 Unregistered trade marks

Unregistered trade marks (TMs) used in the course of trade are protected in Ireland.

Section 10(4)(a) IE-TMA

Conditions for protection

Must be used in the course of trade if protected by any rule of law, including that of passing off.

Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent trade mark if protected by any rule of law, in particular the law of passing off.

(b) The later sign must constitute a misrepresentation likely to lead to deception or confusion, with consequent likelihood of damage to the goodwill or business of the proprietor of the earlier sign. The plaintiff must prove that its goodwill and business suffered or are likely to suffer damage as a result of the defendant’s activities.

The action for passing off is based upon goodwill acquired by use of the earlier sign. Goodwill is sometimes referred to as reputation. In Ireland, goodwill can be acquired without necessarily trading within the territory, provided that a reputation in Ireland or customers in Ireland can be proven. The tort arises if a later sign constitutes a misrepresentation likely to lead to deception or confusion, with consequent likelihood of damage to the goodwill or business of the proprietor of the earlier sign. The law is explained in ‘Intellectual Property Law in Ireland’ by Robert Clark, Shane Smyth, Niamh Hall, Bloomsbury Professional, 3rd edition 2010 (see http://www.bloomsburyprofessional.com/1155/Bloomsbury-Professional-Intellectual- Property-Law-in-Ireland-3rd-edition.html).. Authoritative statements of the law are found in court judgments, for example in C. & A. Modes vs C. & A. (Waterford) [1978] Fleet Street Reports 126; Adidas K.G. v. O'Neill & Co Limited [1983] Fleet Street Reports 76; Guiness Ireland Group v. Kilkenny Brewing Co Limited [2000] Fleet Street Reports 112; Allergan Inc. v Ocean Healthcare Ltd [2008] IEHC 189; Jacob Fruitfield Food Group Ltd v United Biscuits (UK) Ltd [2007] IEHC 368; and McCambridge v Brennan Bakeries Ltd [2012] IESC 46.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 39

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7.2 Other signs used in the course of trade

Business sign used in the course of trade

Section 10(4)(a) and (5), IE-TMA

Right to prohibit use of subsequent TMs if protected by any rule of law, in particular the law of passing off. On the law of passing off, see remarks above under point A.

Conditions for protection

As under Section 7.1 above.

a) Rights conferred (a) and conditions (b)

As under Section 7.1 above.

8 Greece

8.1 Unregistered trade marks

There are two sets of provisions dealing with the protection of unregistered trade marks and related signs: (a) trade mark law confers on the owner the right to prohibit registration of a later trade mark, whereas (b) the law on unfair competition and other specific provisions deal with the issue of use. As the complementary application of trade mark law for any matter not directly dealt with in other statutes is generally accepted, both sets of rules are indicated.

Article 124(3)(a) GR-TML (Law No 4072/2012); Article 13(1) of Law 146/1914 on Unfair Competition

Conditions for protection

Protection is acquired through use in the course of trade. If not inherently distinctive, unregistered trade marks must also be ‘established in the market’.

Rights conferred (a) and conditions (b)

(a) Right to prohibit registration of a subsequent trade mark. (b) Prior use, likelihood of confusion as to origin.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 40

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8.2 Other signs used in the course of trade

Company names

Article 58 Civil code Articles 4-8 Law 1089/1980, as amended by 1746/1988

Conditions for protection

Protection is acquired exclusively through use in the course of trade. Registration is not relevant for protection; it only serves administrative purposes.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) Prior use, likelihood of confusion as to origin.

Trade names and commercial establishment insignia

Article 124(3)(a) GR-TML (Law No 4072/2012) Article 13(1)(2) Law 146/1914 on Unfair Competition

Conditions for protection

Protection is acquired exclusively through use in the course of trade. If not inherently distinctive, the trade name or insignia must also be ‘established in the market’.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) Prior use, likelihood of confusion as to origin.

Other distinctive signs

Article 124(3)(a) GR-TML

The peculiar shape of the goods or of their packaging, as well as the peculiar get-up or decoration thereof (Iδιαίτερος διασχηματισμός, διακόσμηση).

Conditions for protection

The signs must be known in the relevant commercial sector as product identifiers of a given trader. Protection is acquired through use in the course of trade. The signs must be capable of performing a trade mark-like function (i.e. they must have distinctive character as a result of a certain degree of originality).

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 41

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Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) Prior use, likelihood of confusion as to origin.

General note: All the exclusive signs referred to above are also protected under Article 1 of Law 146/1914 on ‘Unfair Competition’, especially as regards infringing acts not covered by the above provisions (e.g. protection of reputed signs for dissimilar goods – dilution of, or unfair advantage to, their distinctiveness or repute, that is, where likelihood of confusion is not relevant).

9 Spain

9.1 Unregistered trade marks

Unregistered trade marks are not protected in Spain unless they are considered to be well known in Spain within the meaning of Article 6bis of the Paris Convention.

9.2 Other signs used in the course of trade

Business names (Nombres comerciales) Article 7(1)(a) and (b), 7(2)(a) and (b) ES -TML

Conditions for protection

The name must be registered or applied for at the Spanish Patent and Trade Mark Office.

Rights conferred (a) and conditions (b)

(a) Right to oppose and prohibit the use of subsequent trade marks. (b) Identical or similar signs and identical or similar goods or services and likelihood

of confusion.

Business names, designations or corporate names of legal persons Article 9(1)(d) ES–TML

Conditions for protection

The names do not have to be registered or applied for at the Spanish Patent and Trade Mark Office provided that they identify a person (enterprise) for the purposes of trade. Evidence of use or evidence that the sign is well known in the national territory must be provided.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 42

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Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent trade marks. (b) Identical or similar signs and identical or similar goods or services and likelihood

of confusion.

10 France

10.1 Unregistered trade marks

Unregistered trade marks are not recognised under French law with the exception of well‐known trade marks in the sense of Article 6bis of the Paris Convention (Article L711-4(a) French Intellectual Property Code (FR-IP CODE))

10.2 Other signs used in the course of trade

Article L711-4 FR-IP Code provides a non exhaustive list of signs that, if qualified as earlier, might prohibit use of a later trade mark.

Company name or style of a company (‘dénomination sociale’, “raison sociale”)

Article L711-4(b) FR-IP Code

Conditions for protection

Protection of the company name is acquired upon completion of the documents founding the company. Must be known throughout the French territory.

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of a subsequent trade mark. (b) There must be a risk of confusion in the mind of the public.

Trade name (nom commercial)

Article L711-4(c) FR-IP CODE

Conditions for protection

Protection acquired from first use in trade.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 43

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Rights conferred (a) and conditions (b)

(a) Right to prohibit use of a subsequent trade mark. (b) There must be a risk of confusion in the mind of the public.

Business sign (‘enseigne’)

Article L711-4(c) FR-IP CODE

Conditions for protection

Protection acquired from first use in trade. Must be known throughout the territory of France (enseigne notoire).

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of a subsequent trade mark. (b) There must be a risk of confusion in the mind of the public.

Domain names (‘noms de domaine’)

Conditions for protection

The domain name is protected when it is reserved and used.

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of a subsequent trade mark for identical or similar products and/or in the event of unfair advantage or dilution of reputations.

(b) There must be a likelihood of confusion or damage to first user.

11 Croatia

11.1 Unregistered trade marks

Unregistered trade marks are protected in Croatia. Article 6(2), (4) Croatian Trade Marks Act and the Act on Amendments to the Trade Mark Act

Conditions for protection

The unregistered trade mark must be well-known in the Republic of Croatia prior to the filing/priority date of the contested trade mark in the sense in which the words ‘well- known’ are used in Article 6bis of the Paris Convention.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 44

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Rights conferred (a) and conditions (b)

(a) Right to oppose the registration of a subsequent trade mark. (b) The subsequent trade mark must be identical or similar and have applied for

identical or similar goods and/or services.

11.2 Other signs used in the course of trade

Earlier firm

Article 6(6) Croatian Trade Marks Act and the Act on Amendments to the Trade Mark Act

Conditions for protection

It must be registered.

Rights conferred (a) and conditions (b)

(a) Right to oppose the registration of a subsequent trade mark. (b) The firm or the essential part thereof must be identical or similar to the sign in

respect of which registration is sought, and the goods and/or services must be identical or similar, unless the applicant had the identical or similar firm at the time of filing the application for registration of a trade mark.

12 Italy

12.1 Unregistered trade marks

An unregistered trade mark (‘marchio di fatto’) is defined as a sign known as a trade mark or as a sign that is distinctive for manufactured goods or services on the market. Prior use must be notoriously known.

Article 12(1)(a) IT-IP CODE

Conditions for protection

The unregistered trade mark must be used to the extent that it is ‘notoriously known throughout Italy or a substantial part thereof.

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of subsequent trade marks.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 45

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(b) Identical or similar signs and identical or similar goods or services and likelihood of confusion including likelihood of association.

12.2 Other signs used in the course of trade

Article 12(1)(b) IT-IP Code

Company name, corporate name, trade name or business signs, domain name adopted by others (‘ditta’, ‘denominazione sociale’, ‘ragione sociale’, ‘insegna’, ‘nome a dominio’)

Conditions for protection

Used to the extent that it is ‘notoriously known throughout Italy or a substantial part thereof.

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of subsequent trade mark, provided it is known by the relevant public throughout Italy or a substantial part thereof.

(b) Identical or similar signs and identical or similar goods or services and likelihood of confusion including likelihood of association.

13 Cyprus

13.1 Unregistered trade marks

Unregistered trade marks are not recognised under the law of Cyprus.

14 Latvia

14.1 Unregistered trade marks

Unregistered trade marks are protected in Latvia. Article 9(3) No 4 LV-TML

Conditions for protection

The unregistered mark must have been used in good faith and lawfully prior to the date of filing of the application for registration of the trade mark (or the priority date

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 46

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respectively) in commercial activities in Latvia in connection with identical or similar goods or services.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) Identical or similar signs and identical or similar goods or services; use of the

subsequent trade mark must also be capable of misleading consumers as to the origin of the goods and services.

14.2 Other signs used in the course of trade

Trade names originating in Latvia or in a foreign country (commercial designations, names of a mass medium, or other similar signs) that are well-known in Latvia.

Article 9(3) No 3, LV-TML

Conditions for protection

The trade name must be acquired through fair and lawful use in the course of trade in Latvia before the filing/priority date of a subsequent trade mark used in an identical or similar business sector. A ‘well-known’ trade name must have become well known in Latvia before the filing/priority date of the subsequent trade mark.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) The signs must be the same or confusingly similar and must cover identical or

similar goods and services.

15 Lithuania

15.1 Unregistered trade marks

Article 7(1), (3), 9 LT-TML.

Conditions for protection

Unregistered trade marks are protected only if recognised as well known by a court decision.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 47

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15.2 Other signs used in the course of trade

Trade names/business names and other business identifiers

Rights conferred (a) and conditions (b)

(a) Right to invalidate subsequent (registered) trade marks. (b) Registration of a mark will be declared invalid if the mark is identical to a legal person’s business name or is likely to be confused with a legal person’s business name.

Article 7(1), No 4 LT-TML

16 Hungary

16.1 Unregistered trade marks

An unregistered trade mark is not protected under Hungarian trade mark law unless it has been used effectively in the country where use of the sign without the consent of the prior user would be contrary to law.

Article 5(2)(a) HU-TML

Article 6 of Act LVII of 1996 on the prohibition of unfair and restrictive market practices prohibits the manufacture, distribution or advertising of goods and services without the consent of competitors if the goods and services concerned have a characteristic presentation, packaging or labelling (including designation of origin), and the use of a name, mark or designation by which a competitor or its goods and services are usually recognised.

The abovementioned provisions are only an example.

17 Malta

17.1 Unregistered trade marks

Chapter 26 of Malta’s Trade Mark Act; Article 6(4) MT‐TMA

Conditions for protection

Protection is acquired through continuous prior use.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 48

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Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) Signs must be likely to be confused and must cover identical or similar goods and

services.

17.2 Other signs used in the course of trade

Article 11(3) MT-TMA

Conditions for protection

Protection is acquired through continuous use.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks (Article 6(2) MT-TMA). (b) Likelihood of confusion.

In view of Articles 6(4) and 11(3) MT-TMA, other signs used in the course of trade are regarded as earlier rights.

18 Austria

18.1 Unregistered trade marks

Unregistered trade marks (TMs) are protected in Austria:

§ 31 Austrian Trade Mark Protection Act (1970)

Conditions for protection

An unregistered TM must have acquired a certain recognition in the course of trade (‘Verkehrsgeltung’) before the owner of a subsequent (registered) TM applied for registration of its TM, unless the owner of the subsequent (registered) TM has used its TM in trade without registering it for at least as long as the owner of the unregistered TM.

Rights conferred (a) and conditions (b)

(a) Right to apply for cancellation of a subsequent (registered) TM. (b) The owner of the unregistered TM must not have tolerated use in trade of the

subsequent registered TM during five successive years (‘Verwirkung’). This applies only to those goods and/or services for which the registered trade mark

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 49

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was used and only if the application for the registered trade mark was not filed in bad faith. Likelihood of confusion must be found.

18.2 Other signs used in the course of trade

§ 32 Austrian Trade Mark Protection Act (1970) § 9 of the Federal Act Against Unfair Competition (1984)

Corporate signs (‘Unternehmenskennzeichen’), i.e. names, firms (trade names) (‘Firma’) or specific designations of an undertaking (‘besondere Bezeichnung eines Unternehmens’), or similar designations

Conditions for protection

The entrepreneur must be the owner of the corporate sign(s).

Rights conferred (a) and conditions (b)

(a) Right to apply for cancellation of a subsequent (registered) TM. (b) The entrepreneur must not have tolerated use in trade of the registered TM

during five successive years (‘Verwirkung’). This applies only to those goods and/or services for which the registered trade mark was used and only if the application for the registered trade mark was not filed in bad faith. Use of the trade mark could entail a likelihood of confusion in trade with one of the petitioner’s aforementioned corporate signs.

Business signs (‘Geschäftsabzeichen’) and other facilities designed to distinguish the enterprise from other enterprises including the get-up or packaging of goods or the presentation of business stationery

Conditions for protection

The business signs must be perceived as designations of the enterprise by the market participants involved or have acquired such recognition through use (‘Verkehrsgeltung’).

Rights conferred (a) and conditions (b)

(a) [Only] the right to sue the infringer to cease and desist [from such action] as well as to claim damages if the infringement was carried out with intent or in a negligent way. [In addition to the above, with registered TMs the owner also has the right to sue for cease and desist [use of its TM] and to claim damages before a civil court.]

(b) The entrepreneur must not have tolerated use in trade of the registered TM during five successive years (‘Verwirkung’). This applies only to those goods and/or services for which the registered trade mark was used and only if the application for the registered trade mark was not filed in bad faith. The trade mark

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 50

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must be used in such a way that it is likely to be confused in trade with one of the entrepreneur’s business signs.

19 Poland

19.1 Unregistered trade marks

Article 132(1)(ii) PL-IP Law

Conditions for protection

Unregistered trade marks (TMs) are protected only if they are well known and used in the course of trade.

Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent trade marks. (b) Unregistered TM must be well known and used in the course of trade; likelihood

of confusion.

Additional protection is available to well-known unregistered marks with a reputation (renowned trade mark). The owner of such a TM may request that the registration of a later identical or similar TM be declared invalid, irrespective of the goods or services for which it is registered, if the use thereof without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier TM. A trade mark owner is prohibited from bringing such an action if the owner has been aware of and tolerated use of the later TM for five consecutive years.

19.2 Other signs used in the course of trade

Article 131(1), (5) PL-IP Law Article 156(1)(i) PL-IP Law, Article 158(1) PL-IP Law

Name or address under which a person runs his business activity

Conditions for protection

Name under which a person runs their business activity.

Rights conferred (a) and conditions (b)

(a) Right to prohibit the filing of a trade mark.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 51

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(b) There must have been prior use of the name for business activity for identical or similar goods such as to be likely to mislead the public as to the origin of the product.

20 Portugal

20.1 Unregistered trade marks

The following unregistered trade marks (TMs) are protected in Portugal.

Unregistered TMs that are being used

Article 227 PT–IP Code

Conditions for protection

The unregistered TM must have been used in Portugal during the six months prior to the filing of an application for registration.

Rights conferred (a) and conditions (b)

(a) Right to oppose registration of the same trade mark by other entities. (b) The signs and the goods and/or services must be the same.

Well-known marks

Article 241, PT-IP Code

Conditions for protection

The mark in question must be well known in Portugal.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) The signs must be identical or similar and the goods and/or services identical or

similar; likelihood of confusion or association with the holder of the earlier right must be established; the interested party must have applied for registration of the well-known mark.

Prestigious trade marks

Article 241 PT-IP Code

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 52

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Conditions for protection

The mark in question must enjoy prestige in Portugal.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) The signs must be identical or similar or, even if the goods and services are

dissimilar, use of the trade mark applied for must be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier prestigious trade mark; the interested party must have applied for registration of the prestigious trade mark.

20.2 Other signs used in the course of trade

Trade names, company names

Article 239(2)(a) PT-IP Code

Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent trade marks. (b) The name in question must be likely to mislead or confuse the consumer.

Logotypes (name and emblem/insignia of an establishment) (Word and figurative signs identifying an entity trading products or providing services)

Article 304-N PT-IP Code

Conditions for protection

The sign in question must be registered.

Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent signs. (b) The proprietor must not have given its consent, and the subsequent sign must be

identical or similar to the proprietor’s sign.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 53

FINAL VERSION 1.0 01/08/2015

21 Romania

21.1 Unregistered trade marks

As a general rule, unregistered trade marks (TMs) are not protected under Romanian TM Law (Law No 84/1998 on trade marks and geographical indications). As an exception to that rule, in the case of an opposition, an unregistered trade mark may be regarded as an earlier right if it is well-known in Romania within the meaning of Article 6bis of the Paris Convention).

Article 3(d) and Article 6(2)(f) of the RO-IP Law

Conditions for protection

The unregistered TM must be well known in Romania within the meaning of Article 6bis of the Paris Convention.

Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent trade marks. (b) It must be well-known in Romania and there must be a likelihood of confusion.

21.2 Other signs used in the course of trade

Other signs used in the course of trade that are considered to be earlier rights are trade names.

Only the owner of a trade name, can oppose a trade mark or request the competent judicial body to cancel that trade mark.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. Only the owner of a trade name can oppose a trade mark or request the competent judicial body to cancel that trade mark right.

(b) Prior use on the market.

22 Slovenia

22.1 Unregistered trade marks

Unregistered trade marks are not directly recognised under the Slovenian IP Act.

Rights Under Article 8(4) CTMR

Guidelines for Examination in the Office, Part C Opposition Page 54

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Nevertheless, under Article 44(1)(d) SL–IP Act, a sign is not eligible for registration as a mark if it is identical or similar to a mark or unregistered sign; in the Republic of Slovenia, the latter is regarded as a well-known mark within the meaning of Article 6bis of the Paris Convention.

22.2 Other signs used in the course of trade

Article 44(1)(f) SL–IP Act

Registered trade names (registered company names), where the term ‘company name’ is interpreted broadly and covers not only private companies such as private firms, limited liability companies, other commercial companies, and secondary trade names, but also foundations, unions, associations, museums and public institutions.

23 Slovakia

23.1 Unregistered trade marks

Article 7(f) SK-TML

Unregistered marks are defined as non-registered signs acquired and used in the course of trade prior to the filing of a subsequent application. They must be distinctive and of more than mere local significance.

Conditions for protection

The unregistered mark must have been used earlier in the course of trade of more than mere local significance and must have acquired distinctiveness through use in the course of trade in the territory of the Slovak Republic of more than mere local significance prior to the filing of the contested application.

Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent trade marks. (b) Signs must be identical or similar and must cover identical or similar goods

and/or services

23.2 Other signs used in the course of trade

Article 7(f) SK-TML

Trade names and other related signs.

Rights Under Article 8(4) CTMR

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Conditions for protection

Recordal in the Register of Companies or a similar register.

These signs must have acquired distinctiveness through use in the course of trade in the territory of the Slovak Republic of more than mere local significance prior to the filing of the contested application.

Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent trade marks. (b) Signs must be identical or similar and must cover identical or similar goods

and/or services..

24 Finland

24.1 Unregistered trade marks

Unregistered trade marks are protected in Finland:

§ 1, § 2(3), § 6, § 14(1), (6) of the Finnish Trade Mark Act (FI-TML)

Conditions for protection

Use leading to an unregistered mark becoming established on the market. A mark is considered established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor’s goods and/or services.

Rights conferred (a) and conditions (b)

(a) Right to prohibit use of subsequent (registered) trade marks. (b) The scope of protection is identical to that of a Finnish registered trade mark, i.e.

corresponding to Article 9(1)(a), (b) and (c) CTMR.

24.2 Other signs used in the course of trade

§ 1, § 2(2), 3(2), § 6, § 14(1), (6) FI-TML

Trade names (toiminimi, firma: any name that a natural or legal person uses in business activities), including secondary trade names (aputoiminimi, bifirma: natural or legal persons can carry out part of their business under a secondary trade name) and secondary symbols (toissijainen tunnus, sekundärt kännetecken: signs, including figurative signs, used in the course of trade).

Rights Under Article 8(4) CTMR

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Conditions for protection

Use leading to a trade name becoming established on the market.

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) The signs must relate to identical or similar goods and/or services and there must

be a likelihood of confusion.

Trader’s name

§ 1, 6, § 14(1), (6) FI-TML

Rights conferred (a) and conditions (b)

(a) Right to prohibit subsequent trade marks. (b) The signs must relate to identical or similar goods and/or services and there must

be a likelihood of confusion.

25 Sweden

New Swedish Trade Marks Act (2010:1877)

25.1 Unregistered trade marks

Chapter 1, Article 7 and Chapter 2, Article 8 SE-TMA

Conditions for protection

The unregistered trade mark must have been used in such a way that it has become established on the market.

Rights conferred (a) and conditions (b)

(a) The same as for registered trade marks: right to prohibit the use of subsequent trade marks.

(b) A mark is considered to have become established on the market when it is, within a significant portion of the circle for which it is intended, known as a symbol for the goods being made available under it.

Rights Under Article 8(4) CTMR

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25.2 Other signs used in the course of trade

Trade names/Company names

Chapter 1, Article 7(1); Chapter 1, Article 8; Chapter 2, Article 9 SE-TMA

Conditions for protection

The name must be registered as a company name or used in such a way that it has become established on the market. May be limited to the part of the country in which it is established on the market.

Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent trade marks. (b) There must be a likelihood of confusion and the signs must cover identical or

similar goods and services.

26 United Kingdom

General note for unregistered signs: passing off is not in any way a ‘proprietary right’ that ‘protects an unregistered trade mark or other sign used in the course of trade’. It refers rather to a ‘wrongful invasion’ of a property right, but the property protected in this case is the goodwill and reputation of a business that is likely to be harmed by misrepresentation. Whether, e.g., an opposition based on Section 5(4)(a) is successful will, then, depend on a number of cumulative factors: (demonstration and scope of goodwill; misrepresentation, damage to goodwill). On that basis, any distinction between ‘protection’ given to ‘unregistered trade marks’ and to ‘other signs used in the course of trade’ in the context of the UK’s common-law right of ‘passing off’ is meaningless. The right of ‘passing off’ could potentially (and more often than not does) arise purely at local level (relative to the UK as a whole). (See below, ‘The particularities of the action of passing off’).

26.1 Unregistered trade marks

Unregistered trade marks used in the course of trade

Section 5(4)(a) UK-TMA

Conditions for protection

Must be used in the course of trade if protected by any rule of law, including that of passing off.

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Rights conferred (a) and conditions (b)

(a) Right to prohibit the use of subsequent trade marks. (b) Goodwill must be demonstrated in the UK at the relevant date, the scope of

which must extend to the goods or services of the application; misrepresentation as regards the ‘signs’ at issue; damage to the opponent’s goodwill can be inferred by use of the sign applied for.

26.2 Other signs used in the course of trade

Section 5(4)(a) UK-TMA

Sign used in the course of trade.

Sign used in the course of trade, protected by any rule of law, including that of passing off.

Conditions for protection

Same as under Section 26.1.

Rights conferred (a) and conditions (b)

Same as under Section 26.1.

Remarks: The Olympic Symbol Protection Act 1995 contains provisions on the exclusive use for commercial purposes of the Olympic symbol and certain words associated with the Olympic games by an individual nominated by the Secretary of State; such entitlement is not a basis for Article 8(4) CTMR.

The particularities of the action of passing off

Passing off is an economic tort in the common-law jurisdictions, the essential elements of which are (i) a misrepresentation (ii) causing damage to (iii) the goodwill of a trader or traders. It is a form of intellectual property enforcement against unauthorised use of an intellectual property right.

The purpose of this section is not to analyse the substantive requirements of passing- off actions as developed by the jurisprudence of the common-law courts but rather to set out which rights that can be protected by passing-off actions fall within the scope of Article 8(4) CTMR, and to show how the European judicature has applied the key requirements of Article 8(4) CTMR as regards passing off.

Historically, and in their most common form, passing-off actions offer protection similar to that for registered trade marks to non-registered trade marks in that they prevent use of a name, word, device or get-up that leads to the goods or services of one trader being misrepresented as those of another. In doing so, passing-off actions protect the goodwill that traders accrue by using signs rather than protecting signs per se.

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The tort of passing off covers a broad set of situations ranging from its usual form above to an extended form which may prevent the use of generic terms where such use misrepresents goods or services as possessing a characteristic or quality that they do not have (e.g. Vodkat used on a type of drink that is not Vodka).

In passing-off actions, the opponent (claimant) must prove three elements, the so-called classical trinity:

(a) goodwill attached to the goods or services that it supplies;

(b) misrepresentation by the defendant to the public (intentional or not) leading or likely to lead the public to believe that the goods or services offered are those of the opponent (claimant);

(c) damage (actual or potential) by reason of the erroneous belief engendered by the defendant’s misrepresentation.

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GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE

INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS

PART C

OPPOSITION

SECTION 5

TRADE MARKS WITH REPUTATION ARTICLE 8(5) CTMR

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Table of Contents

1 Introduction................................................................................................ 4 1.1 Purpose of Article 8(5) CTMR ....................................................................4 1.2 Legal framework.........................................................................................4

2 Scope of Applicability ............................................................................... 5 2.1 Applicability to registered marks ..............................................................5

2.1.1 The requirement of registration ...................................................................... 5 2.1.2 Relationship between marks with reputation (Article 8(5) CTMR) and well-

known marks (Article 8(2)(c) CTMR).............................................................. 6

2.2 Applicability to similar and identical goods and services.......................8

3 Conditions of Application ......................................................................... 9 3.1 Earlier mark with reputation ....................................................................10

3.1.1 Nature of reputation...................................................................................... 10 3.1.2 Scope of reputation ...................................................................................... 11

3.1.2.1 Degree of recognition ................................................................................11 3.1.2.2 Relevant public..........................................................................................12 3.1.2.3 Goods and services covered.....................................................................13 3.1.2.4 Relevant territory .......................................................................................14 3.1.2.5 Relevant point in time................................................................................16

3.1.3 Assessment of reputation – relevant factors ................................................ 18 3.1.3.1 Trade mark awareness..............................................................................19 3.1.3.2 Market share .............................................................................................20 3.1.3.3 Intensity of use ..........................................................................................22 3.1.3.4 Geographical extent of use........................................................................24 3.1.3.5 Duration of use ..........................................................................................24 3.1.3.6 Promotional activities ................................................................................25 3.1.3.7 Other factors..............................................................................................27

3.1.4 Proof of reputation ........................................................................................ 28 3.1.4.1 Standard of proof.......................................................................................28 3.1.4.2 Burden of proof..........................................................................................29 3.1.4.3 Evaluation of the evidence ........................................................................30 3.1.4.4 Means of evidence ....................................................................................31

3.2 The similarity of the signs .......................................................................39 3.2.1 Notion of ‘similarity’ pursuant to Article 8(5) CTMR compared with

Article 8(1)(b) CTMR .................................................................................... 40

3.3 The link between the signs ......................................................................41 3.3.1 Examples where a link was found between the signs .................................. 43 3.3.2 Examples where no link was found between the signs................................ 44

3.4 The risk of injury ......................................................................................46 3.4.1 Protected subject matter............................................................................... 46 3.4.2 Assessment of the risk of injury.................................................................... 47 3.4.3 Types of injury .............................................................................................. 49

3.4.3.1 Taking unfair advantage of distinctiveness or repute ................................50 3.4.3.2 Detriment to distinctiveness.......................................................................56 3.4.3.3 Detriment to repute....................................................................................60

3.4.4 Proving the risk of injury ............................................................................... 66 3.4.4.1 Standard and burden of proof....................................................................66

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3.4.4.2 Means of evidence ....................................................................................69

3.5 Use without due cause.............................................................................69 3.5.1 Examples of due cause ................................................................................ 70

3.5.1.1 Due cause was accepted ..........................................................................70 3.5.1.2 Due cause was not accepted ....................................................................71

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1 Introduction

1.1 Purpose of Article 8(5) CTMR

Whereas under Article 8(1)(a) CTMR double identity of signs and goods/services and under Article 8(1)(b) CTMR a likelihood of confusion are the necessary preconditions for the protection of a registered trade mark, Article 8(5) CTMR requires neither identity/similarity of goods/services nor a l ikelihood of confusion. Article 8(5) CTMR grants the protection for registered trade marks not only as regards identical/similar goods/services but also in relation to dissimilar goods/services without requiring any likelihood of confusion, provided the signs are identical or similar, the earlier mark enjoys a reputation and the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

The rationale behind the extended protection under Article 8(5) CTMR is the consideration that the function and value of a trade mark are not confined to its being an indicator of origin. A trade mark can also convey messages other than an indication of the origin of the goods and services, such as a promise or reassurance of quality or a certain image of, for example, luxury, lifestyle, exclusivity etc. (‘advertising function’) (judgment of 18/06/2009, C-487/07 L’Oréal and others). Trade mark owners frequently invest large sums of money and effort to create a certain brand image associated with their trade mark. This image associated with a trade mark confers on it an – often significant – economic value, which is independent of that of the goods and services for which it is registered.

Article 8(5) CTMR aims at protecting this advertising function and the investment made in creating a c ertain brand image by granting protection to reputed trade marks, irrespective of the similarity of the goods or services or of a l ikelihood of confusion, provided it can be demonstrated that the use of the contested application without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. Consequently, the main focus of Article 8(5) CTMR is not the protection of the general public against confusion as to origin, but rather the protection of the trade mark proprietor against taking unfair advantage of, or being detrimental to, the distinctive character or repute of a mark for which it has made significant investments.

1.2 Legal framework

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark, within the meaning of paragraph 2, the trade mark applied for shall not be registered:

where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade

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mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The same wording is used in the parallel provisions of the Trade Mark Directive (Directive 2008/95/EC of the European Parliament and o f the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (Codified version), ‘TMD’), namely Article 4(3) TMD, which deals with the protection of Community trade marks with reputation, and Article 4(4)(a) TMD, the equivalent provision for national marks. Even though the implementation of Article 4(4)(a) TMD was optional, all the Member States have in fact adopted provisions granting enlarged protection to national marks with reputation.

However, even in the hypothetical case that an acceding country decides not to enact an equivalent provision in its trade mark law, the independent reference to national marks with reputation in Article 8(5) CTMR means that they are directly protected at Community level, that is, irrespective of whether the national law grants them enlarged protection.

The wording of Article 8(5) CTMR is also very similar to the one used in Article 9(1)(c) CTMR and Article 5(2) TMD, that is, the provisions determining the exclusive rights of a trade mark proprietor, with a slight difference in the way these refer to the condition of detriment. Unlike the conditional form in Article 8(5) CTMR, which applies where use of the trade mark applied for ‘would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark’, Article 9(1)(c) CTMR and Article 5(2) TMD read ‘takes unfair advantage of or is detrimental to’. The reason for this difference is that in the first case – Article 8(5) CTMR – registrability is at stake, which may have to be decided upon w ithout any use of the later mark having been made, while in the second case the prohibition of use is at issue. The impact of this difference on the kind of evidence required for proving detriment in either case is discussed in paragraph 3.4 below.

2 Scope of Applicability

The wording of Article 8(5) CTMR has given rise to some controversy as regards its applicability exclusively to (a) earlier registered marks and ( b) dissimilar goods and services. As these issues directly affect the scope of its application, it is necessary to clarify at the outset whether it is possible to also apply Article 8(5) CTMR to (a) unregistered/well-known marks and (b) similar or identical goods and services.

2.1 Applicability to registered marks

2.1.1 The requirement of registration

Article 8(5) CTMR specifies the kinds of earlier rights on which an opposition may be based by reference to paragraph 2 of the same article, which, apart from Community, international, Benelux and nat ional registrations or applications, includes earlier well- known marks within the meaning of Article 6bis of the Paris Convention, that is, marks that may or may not be registered.

It has been argued that as a consequence of this reference, Article 8(5) CTMR should also apply to unregistered marks, at least to the extent that these have become well-

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known in the relevant territory, all the more so since the protection of well-known marks against dissimilar goods and services is favoured both by Article 4(1)(b) of the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks and by Article 16(3) TRIPS.

However, such an i nterpretation cannot be s ustained by the wording of Article 8(5) CTMR, which restricts, indirectly but clearly, its applicability to earlier registered marks by prohibiting registration ‘where [the application] is identical or similar to the earlier trade mark and is to be registered for goods and services that are not similar to those for which the earlier trade mark is registered. It follows that the existence of an earlier registration is a necessary condition for the application of Article 8(5) CTMR and that, as a consequence, the reference to Article 8(2) CTMR should be l imited to earlier registrations and to earlier applications subject to their registration (judgment of 11/07/2007, T-150/04, ‘TOSCA BLU’, para. 55).

Such a restrictive approach is not incompatible with Article 16(3) TRIPS, which also refers to an earlier registration in a very similar manner:

Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark … would indicate a connection between those goods or services and t he owner of the registered trademark and provided that the interests of the owner of the registered trade mark are likely to be damaged by such use. (Emphasis added)

Nor can this view be e xcluded by the fact that the WIPO Recommendations do not impose any conditions for granting extended protection to earlier well-known marks as they are not binding for the interpretation of the CTMR.

Therefore, Article 8(5) CTMR only applies to earlier Community, international, Benelux and national registrations, and to earlier applications, subject to their registration.

2.1.2 Relationship between marks with reputation (Article 8(5) CTMR) and well-known marks (Article 8(2)(c) CTMR)

The requirement of registration serves to mark the border between Article 8(5) CTMR and Article 8(2)(c) CTMR. However, neither Article 8(2)(c) CTMR nor Article 6bis of the Paris Convention stipulate expressly that the well-known mark has to be a non- registered mark. The reason for the principle that only non-registered marks are covered by these latter provisions results indirectly both from the spirit and the ratio legis of these provisions.

As regards the Paris Convention, the purpose of the provision of Article 6bis, introduced for the first time in the Convention in 1925, was to prevent the registration and use of a trade mark liable to create confusion with another mark already well known in the country of such registration, although the latter well-known mark was not, or not yet, protected in that country by registration.

As regards the CTMR, the purpose was to avoid a legal gap as Article 8(5) protects only registered CTMs. Without Article 8(2)(c) CTMR, reputed non-registered trade marks would have remained without protection (apart from that of Article 8(4) CTMR).

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In order to avoid this legal gap, the CTMR foresaw the protection of well-known marks within the sense of Article 6bis of the Paris Convention as this article was drawn up mainly to grant protection to non-registered trade-marks with a well-known character.

Consequently, on the one hand, well-known marks which are not registered in the relevant territory cannot be protected under Article 8(5) CTMR against dissimilar goods. They can only be protected against identical or similar goods if there exists a likelihood of confusion pursuant to Article 8(1)(b) CTMR, to which Article 8(2)(c) CTMR refers for determining the scope of protection. However, this is without prejudice to the fact that well-known marks, to the extent they are not registered, may also be protected under Article 8(4) CTMR. Therefore, if the relevant national law affords them protection against dissimilar goods and services, such enhanced protection may also be invoked under Article 8(4) CTMR.

On the other hand, where well-known marks have been registered, either as CTMs, or as national marks in one of the Member States, they can be invoked under Article 8(5) CTMR, but only if they also fulfil the requirements of reputation.

Even though the terms ‘well-known’ (a traditional term used in Article 6bis of the Paris Convention) and ‘reputation’ denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison of the way well-known marks are defined in the WIPO Recommendations with the way reputation was described by the Court in its judgment of 14/09/1999, C-375/97 ‘General Motors’ (concluding that the different terminology is merely a ‘…nuance, which does not entail any real contradiction…’, para 22).

In practical terms, the threshold for establishing whether a trade mark is well-known or enjoys reputation will usually be the same. Therefore, it will not be unusual for a mark which has acquired well-known character to have also reached the threshold laid down by the Court in General Motors for marks with reputation, given that in both cases the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and that the thresholds required for each case are expressed in quite similar terms (‘known or well-known at the relevant sector of the public1’ for well-known marks, as against ‘known by a s ignificant part of the relevant public’ as regards marks with reputation’).

This has also been confirmed by case-law. In its judgment of 22/11/2007, C-328/06 ‘Fincas Tarragona’, the Court qualified the notions of ‘reputation’ and ‘well-known’ as kindred notions (‘notions voisines’), underlining in this way the substantial overlap and relationship between them (see para. 17). See also the judgment of 11/07/2007, T- 150/04 ‘TOSCA BLU’ (paras. 56-57) The overlap between marks with reputation and r egistered well-known marks has a repercussion on the raising of the ground of opposition, in the sense that it should not matter for the applicability of Article 8(5) CTMR if the opponent calls its earlier registration a well-known mark instead of a mark with reputation. For this reason, the terminology used must be carefully scrutinised, especially where the grounds of the opposition are not clearly explained, and a flexible approach should be taken where appropriate.

In the context of Article 8(2)(c) CTMR, the requirements for applying Article 6bis of the Paris Convention and Article 8(1)(a)/(b) CTMR are the same, although the terminology

1 Article 2(2)(b) and 2(2)(c) of the WIPO Recommendations.

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used is different. Both provisions require similarity or identity between the goods or services and similar or identical signs (Article 6bis uses the terms ‘reproduction’ which is equivalent to identity and ‘imitation’ which refers to similarity). Both articles also require a l ikelihood of confusion (‘liable to create confusion’ is the term used in Article 6bis). However, while according to Article 8(2)(c) CTMR a well-known mark can serve as an earlier right and, thus, as the basis of an opposition, the grounds for an opposition under Article 8(2)(c) CTMR are (solely) Article 8(1)(a) or (b) CTMR.

For example, if the opponent bases the opposition on (i) an earlier registration invoking Article 8(1)(b) CTMR and Article 8(5) CTMR and (ii) an identical earlier well-known mark in the same territory under Article 8(2)(c) CTMR, the earlier right must be examined:

1. under Article 8(1)(b) CTMR as an earlier registration with enhanced distinctiveness (in view of its well-known character);

2. under Article 8(5) CTMR, as an earlier registration with reputation;

3. under Article 8(2)(c) CTMR in conjunction with Article 8(1)(b) CTMR as an earlier non-registered well-known mark (which will only be useful if registration is not proven, as otherwise the outcome is the same as in (i) above).

Even if the opponent has not expressly based its opposition on Article 8(5) CTMR, the contents of the notice and the wording of the explanation of grounds must be carefully analysed with a v iew to objectively establishing whether the opponent also wants to rely on Article 8(5) CTMR.

2.2 Applicability to similar and identical goods and services

The literal interpretation of Article 8(5) CTMR leads to the prima facie conclusion that it only applies to dissimilar goods and services, as its wording provides that the mark applied for will not be registered ‘where it is identical with, or similar to, the earlier trade mark and is to be registered for goods and services which are not similar to those for which the earlier trade mark is registered’.

However, the above interpretation has been strongly criticised for leaving a gap in the protection of marks with reputation, because if protection may be granted under Article 8(5) CTMR where the goods and services are not similar, it would seem inconsistent to deny its application to similar or identical goods and services where the rest of its requirements are fulfilled and Article 8(1)(b) CTMR does not apply because there is no likelihood of confusion. In such a case trade mark owners would get more protection in the less dangerous case, that is, only where a priori the goods and services were not similar. For this reason, it has been s uggested that Article 8(5) CTMR should also apply, directly or by analogy, where the goods and services are identical or similar.

This question with regard to the correct interpretation of the equivalent provisions of the TMD (Article 4(4)(a) and Article 5(2) TMD) was referred to the Court of Justice for a preliminary ruling (judgment of 09/01/2003, C-292/00, ‘Davidoff’).

The Advocate General in Davidoff suggested following the literal approach and, thus, limiting the protection afforded by Article 4(4)(a) and Article 5(2) TMD only to cases

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where the goods and services of the later mark are not similar to those of the earlier mark. He considered that it was the intention of the legislator to limit the special protection granted to marks with reputation to dissimilar goods and that there was no real gap in the law worthy of interpreting the text in a manner contrary to its express wording.

However, the Court did not follow the opinion of the Advocate General and came to the opposite conclusion, namely that Article 4(4)(a) and Article 5(2) TMD should be interpreted ‘as entitling the Member States to provide specific protection for registered trade marks with a reputation in cases where a later mark … is intended to be used or is used for goods or services identical with or similar to those covered by the registered mark’ (emphasis added, para. 30).

In reaching this conclusion, the Court observed that Article 5(2) TMD must not be interpreted solely on the basis of its wording, but also in the light of the overall scheme and objectives of the system of which it is a part. Therefore, it cannot be interpreted in a manner which would lead to marks with a reputation having less protection where a sign is used for identical or similar goods or services. The Court justified this approach as the only one consistent with its interpretation of Articles 4(1)(b) and 5(1)(b) TMD, by referring to its findings in its judgment of 11/11/1997, C-251/95 ‘Sabel’, and its judgment of 22/06/2000, C-425/98 ‘Marca Mode’, where it excluded a broad interpretation of the notion of confusion.

The ruling of the Court in Davidoff, granting extended protection under Article 4(4)(a) TMD and Article 5(2) TMD also for similar or identical goods or services, was reaffirmed in several later judgments (judgment of 23/03/2010, C-238/08, ‘Google France’, para. 48; judgment of 18/06/2009, C-487/07, ‘L’Oreal and ot hers, para. 35; judgment of 23/10/2003, C-408/01, ‘Adidas Salomon and Adidas Benelux’, para. 18).

In practice, the gap of protection closed through the inclusion of identical and similar goods under Article 8(5) CTMR will be confined to the rare cases where the signs are similar, the goods are identical or similar and the earlier mark has a r eputation, but there is no likelihood of confusion within the sense of Article 8(1)(b) CTMR. As the Advocate General pointed out in his opinion, such a scenario will be quite exceptional.

3 Conditions of Application

The following conditions need be m et for Article 8(5) CTMR to apply (judgment of 16/12/2010 joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by the Court of Justice in judgment of 10/05/2012 C-100/11 P):

1. earlier registered mark with reputation in the relevant territory;

2. identity or similarity between the contested CTM application and the earlier mark;

3. use of the sign applied for must be capable of taking an unfair advantage of, or being detrimental to, the distinctiveness or the repute of the earlier mark;

4. such use must be without due cause.

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These conditions are cumulative and failure to satisfy any one of them is sufficient to render that provision inapplicable (judgment of 25/05/2005, T-67/04, ‘SPA-FINDERS’, para. 30; judgment of 22/03/ 2007, T-215/03, ‘VIPS’, para. 34; judgment of 16/12/2010 joined cases T-345/08 and T-357/08 ‘BOTOCYL’, para. 41). The order of the examination of these requirements may change depending on the circumstances of each case. For instance, the examination may start with the assessment of the similarities between the signs, especially in cases where there is little or nothing to say about it, either because the marks are identical or because they are patently similar or dissimilar.

3.1 Earlier mark with reputation

3.1.1 Nature of reputation

The nature and scope of reputation are not defined by either the CTMR or the TMD. Furthermore, the terms used in the different language versions of these texts are not fully equivalent, which has led to considerable confusion as to the true meaning of the term reputation, as admitted by Advocate General Jacobs in his opinion of 26/11/1998 in C-375/97 ‘General Motors’, paras 34-36.

Given the lack of statutory definition, the Court defined the nature of reputation by reference to the purpose of the relevant provisions. In interpreting Article 5(2) TMD the Court held that the text of the TMD ‘implies a certain degree of knowledge of the earlier mark among the public’ and explained that it ‘is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an as sociation between the two trade marks … and the earlier mark may consequently be damaged’ (judgment of 14/09/1999, C-375/97 ‘General Motors’, para. 23).

In view of these considerations, the Court concluded that reputation is a knowledge threshold requirement, implying that it must be principally assessed on the basis of quantitative criteria. In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (judgment of 14/09/1999, C-375/97 ‘General Motors’, paras 22, 23, judgment of 25/05/2005, T-67/04 ‘Spa-Finders’, para. 34).

Moreover, if reputation is to be as sessed on the basis of quantitative criteria, arguments or evidence relating to the esteem that the public might have for the mark, rather than to its recognition, are not directly relevant for establishing that the earlier mark has acquired sufficient reputation for the purposes of Article 8(5) CTMR. However, as the economic value of reputation is also the protected subject-matter of this provision, any qualitative aspects thereof are relevant when assessing the possibility of detriment or unfair advantage (see also paragraph 3.4 below). Article 8(5) CTMR protects ‘famous’ marks not as such, but rather for the success and r enown (‘goodwill’) they have acquired in the market. A sign does not enjoy any reputation inherently, for example, simply because it refers to a renowned person or event, but only for the goods and services it designates and the use that has been made of it.

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Case No Comment

R 0011/2008-4, ‘CASAS DE FERNANDO ALONSO (fig.)’

All the evidence submitted by the opponent related to the fame of Fernando Alonso as a champion racing driver and to the use of his image made by different undertakings to promote their goods and services. However, there was no proof of reputation for the use of the earlier mark as it is registered for the relevant goods and services (paras 44, 48).

R 0201/2010-2 ‘BALMAIN ASSET MANAGEMENT’

The only items of evidence regarding reputation of the earlier mark submitted within the time limit, namely a page showing websites containing the word ‘BALMAIN’, a Wikipedia extract about the French designer Pierre Balmain and five extracts from the website www.style.com containing ‘BALMAIN’ wear collection, were clearly not sufficient to establish reputation of the earlier mark in the EU. Therefore, the opposition was rejected as unsubstantiated (paras 36, 37).

3.1.2 Scope of reputation

3.1.2.1 Degree of recognition

Having defined reputation as a k nowledge threshold requirement, the question that necessarily follows is how much awareness the earlier mark must attain among the public in order to pass this threshold. The Court held in this respect that the ‘degree of knowledge required must be considered to be reached when the earlier trade mark is known by a significant part of the public’ and added that it ‘cannot be inferred from either the letter or the spirit of Article 5(2) [TMD] that the trade mark must be known by a given percentage of the public’ (judgment of 14/09/1999, C-375/97 ‘General Motors’, paras 25, 26, judgment of 16/11/2011, T-500/10 ‘Dorma’, para. 45).

By refraining from defining in more detail the meaning of the term ‘significant’ and by stating that the trade mark does not have to be known by a given percentage of the public, the Court in substance advised against the use o f fixed criteria of general applicability, since a predetermined degree of recognition may not be appropriate for a realistic assessment of reputation if taken alone.

Hence, in determining whether the earlier mark is known by a s ignificant part of the public, account must be taken not only of the degree of awareness of the mark, but also of any other factor relevant to the specific case. For more about the relevant factors and their interplay, see paragraph 3.1.3 below.

However, where goods or services concern quite small groups of consumers, the limited overall size of the market means that a significant part thereof is also restricted in absolute numbers. Hence, the limited size of the relevant market should not be regarded in itself as a factor capable of preventing a mark from acquiring a reputation within the meaning of Article 8(5) CTMR, as reputation is more a question of proportions and less of absolute numbers.

The need for the earlier mark to be known by a significant part of the public also serves to mark the difference between the notions of reputation as necessary condition for the application of Article 8(5) CTMR and enhanced distinctiveness through use as a factor for evaluating likelihood of confusion for the purposes of Article 8(1)(b) CTMR.

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Even though both terms are concerned with the recognition of the mark among the relevant public, in the case of reputation a threshold exists below which extended protection cannot be granted, whereas in the case of enhanced distinctiveness there is no threshold. It follows that in the latter case any indication of enhanced recognition of the mark should be taken into account and evaluated according to its significance, regardless of whether it reaches the limit required by Article 8(5) CTMR. Therefore, a finding of ‘enhanced distinctiveness’ under Article 8(1)(b) CTMR will not necessarily be conclusive for the purposes of Article 8(5) CTMR.

Case No Comment

R 1054/2007-4 ‘mandarino (fig.)’

The documents submitted by the opponent showed promotional efforts in such a manner that the distinctiveness is increased through use. However, the use was not enough to reach the threshold of reputation. None of the documents referred to the recognition of the earlier trade mark by the relevant end consumers, nor was evidence about the market share of the opponent’s goods filed (para. 61).

3.1.2.2 Relevant public

In defining the kind of public that should be taken into account for assessing reputation, the Court held that the ‘public amongst which the earlier trade mark must have acquired a reputation is that [public] concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector’ (C-375/97 ‘General Motors’, para. 24, ‘SPA-FINDERS’, paras 34, 41).

Hence, if the goods and services covered by the mark are mass consumption products, the relevant public will be the public at large, whereas if the designated goods have a very specific application or exclusively target professional or industrial users, the relevant public will be limited to the specific purchasers of the products in question.

Case No Comment

R 1265/2010-2 ‘MATTONI (fig.)’ Taking into account the nature of the goods for which the opponent claims reputation, namely mineral water, the relevant public is the public at large (para. 44).

R 2100/2010-1 SEXIALIS

The goods for which the sign enjoys reputation are medicinal preparations for the treatment of sexual dysfunction. The relevant public is the general public and professionals with a high level of attention (para. 64).

Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P

The goods for which the earlier mark enjoys reputation are pharmaceutical preparations for the treatment of wrinkles. The evidence of the promotion of the earlier mark ‘BOTOX’ in English in scientific and general-interest press was sufficient to establish reputation of the mark amongst both the general public and health- care professionals (paras 65-67 in C-100/11 P). Therefore, both these categories of consumers have to be taken into account.

In addition to the actual buyers of the relevant goods, the notion of relevant public extends to the potential purchasers thereof, as well as to those members of the public that only come indirectly into contact with the mark, to the extent that such

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consumer groups are also targeted by the goods in question, for instance, sports fans in relation to athletic gear, or frequent air-travellers as regards air carriers, etc.

Case No Comment

T-47/06 ‘NASDAQ’

The relevant services are stock exchange price quotation services in Classes 35 and 36, which normally target professionals. The opponent submitted evidence showing that the mark ‘NASDAQ’ appears almost daily in many newspapers and on many television channels that can be read/viewed throughout Europe. Therefore, the Board was right to hold that the reputation of the trade mark ‘NASDAQ’ had to be determined for the European consumers not only among the professional public, but also to an important subsection of the general public (paras 47, 51).

T-60/10 ‘ROYAL SHAKESPEARE’

The evidence of reputation supports and reinforces the fact that the relevant public for theatre productions is the public at large and not a limited and exclusive circle. The intervener’s activities were advertised, presented and commented on in numerous newspapers targeting the public at large. The intervener toured different regions throughout the United Kingdom and performed before a wide public in the United Kingdom. An activity on a large scale and, hence, a service offered to the public at large, is reflected both in the high turnover and the high box office sales. Furthermore, it is clear from the documents submitted by the intervener that the intervener received substantial annual sponsorship income from undertakings in diverse sectors which also reach the public at large, such as banks, undertakings in the alcoholic drinks sector and car manufacturers (paras 35, 36).

Quite often, a given product will concern various purchaser groups with different profiles, as in the case of multipurpose goods or goods that are handled by several intermediates before they reach their final destination (distributors, retailers, end- users). In such cases the question arises whether reputation has to be assessed within each separate group or if it should cover all the different types of purchaser. The example given by the Court in C-375/97, ‘General Motors’, (traders in a specific sector) implies that reputation within one single group may suffice.

Likewise, if the earlier trade mark is registered for quite heterogeneous goods and services, different segments of the public may be concerned by each type of goods, and, therefore, the overall reputation of the mark will have to be assessed separately for each category of goods involved.

The foregoing only deals with the kind of public to be taken into account in assessing whether the earlier mark has reached the threshold of reputation laid down by the Court in General Motors. However, a r elevant question arises when assessing detriment or unfair advantage, namely whether the earlier mark must also be known to the public concerned by the goods and services of the later mark, since otherwise it is difficult to see how the public will be in a position to associate the two. This issue is discussed in paragraph 3.4 below.

3.1.2.3 Goods and services covered

The goods and services must be first of all those for which the earlier trade mark is registered and for which reputation is claimed.

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Case No Comment

R 1473/2010-1 ‘SUEDTIROL’

The opposition was dismissed since the earlier marks were not registered for the services which, according to the opponent, enjoy a reputation. Article 8(5) CTMR can only be i nvoked if the trade mark affirmed to be w ell known/renowned is a r egistered trade mark and if the goods/services for which this reputation/renown is claimed appear on the certificate (para. 49).

The goods and services to which the evidence refers have to be i dentical (not only similar) to the goods and services for which the earlier trade mark is registered.

Case No Comment

R 1033/2009-4 ‘PEPE’

The goods which were assessed to be reputed in Germany by the decision and order referred to only concern articles of skin and body care and children’s cream. These articles are not identical to the earlier mark’s goods in Class 3, make-up products; nail treating products; namely nail lacquer and remover. Therefore, the opponent did not prove reputation for the earlier German mark in the relevant territories (para. 31).

Where the earlier mark is registered for a wide range of goods and services targeting different kinds of public, it will be necessary to assess reputation separately for each category of goods. In such cases the earlier mark may not have a reputation for all of them, as it may not have been used at all for some of the goods, whereas for others it may not have reached the degree of knowledge necessary for the application of Article 8(5) CTMR.

Hence, if the evidence shows that the earlier mark enjoys partial reputation, that is, the reputation only covers some of the goods or services for which it is registered, it is only to that extent that this mark may be protected under Article 8(5) CTMR. Consequently, it is only these goods that may be taken into account for the purposes of the examination.

Case No Comment

R 1588/2009-4 ‘PINEAPPLE’

The Board concluded that the enhanced distinctiveness and reputation of the earlier marks did not concern the opponent’s G&S which were considered to be identical or similar to the contested G&S. For these G&S no e nhanced distinctiveness or reputation was proven, with the exception of computer software in Class 9 (para. 43).

R 1466/2008-2 and R 1565/2008-2, ‘COMMERZBANK ARENA’

The evidence submitted sufficiently demonstrated that the ‘ARENA’ brand was known by a significant part of the relevant public. However, the evidence did not include any relevant information which could allow the level of brand awareness of the ‘ARENA’ brand in sectors other than swimwear and swimming articles to be determined (paras 58, 60).

3.1.2.4 Relevant territory

According to Article 8(5) CTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for national marks the relevant

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territory is the Member State concerned, whereas for CTMs the relevant territory is the European Union.

In General Motors, the Court stated that a national trade mark cannot be required to have a reputation throughout the entire territory of the Member State concerned. It is sufficient if reputation exists in a s ubstantial part of that territory. For the Benelux territory in particular, the Court held that a substantial part thereof may consist of a part of one of the Benelux countries (judgment of 14/09/1999, C-375/97 ‘General Motors’, paras 28, 29).

The Court has clarified that for an earlier Community trade mark reputation throughout the territory of a single Member State may suffice.

Case No Comment

C-301/07 ‘PAGO’

The case concerned a Community trade mark with a reputation throughout Austria. The Court indicated that a Community trade mark must be known in a substantial part of the Community by a significant part of the public concerned by the goods or services covered by that trade mark. In view of the facts of the particular case, the territory of the Member State in question (Austria) was considered to constitute a substantial part of the territory of the Community (paras 29, 30).

In general, however, when evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory.

Case No Comment

R 1283/2006-4 ‘RANCHO PANCHO (fig.)’

Although the evidence submitted showed use of the mark in 17 restaurants in France in 2002, this figure was considered rather low for a country of 65 million inhabitants. Therefore, the reputation was not proven (para. 22).

Opponents often indicate in the notice of opposition that the earlier mark has a reputation in an area that extends beyond the territory of protection (e.g. a pan- European reputation is alleged for a national mark). In such a case the opponent’s claim must be examined with regard to the relevant territory.

Similarly, the submitted evidence must specifically concern the relevant territory. For example, if the evidence relates to Japan for instance, or to undefined regions, it will not be able to show reputation in the Community or in a Member State. Therefore, figures concerning sales in the Community as a whole, or world-wide sales, are not appropriate for showing reputation in a specific Member State, if the relevant data are not broken down by territory. In other words, a ‘wider’ reputation must also be specifically proven for the relevant territory if it is to be taken into account.

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Case No Comment

R 1718/2008-1 ‘LINGLONG’

Most of the documents submitted related to countries outside the European Union, mainly China, the opponent’s home country, and other Asian countries. Consequently, the opponent cannot successfully claim to hold a well-known mark in the EU (para. 53).

R 1795/2008-4 ‘ZAPPER-CLICK’ (appeal dismissed T-360/10)

The respondent sustained in the notice of cancellation that reputation was claimed for the territory of the UK. However, the international registration only designated Spain, France and Portugal and, therefore, did not extend to the territory of the UK. In addition, the respondent did not file any evidence of a reputation in the Member States designated by the international registration (para. 45).

However, where reputation is claimed as extending beyond the territory of protection and there is evidence to this effect, this must be taken into account because it may reinforce the finding of reputation in the territory of protection.

3.1.2.5 Relevant point in time

The opponent must show that the earlier mark had acquired a reputation by the filing date of the contested CTM application, taking account, where appropriate, of any priority claimed, on condition of course that the priority claim has been accepted by the Office.

In addition, the reputation of the earlier mark must subsist until the decision on t he opposition is taken. However, in principle it will be sufficient for the opponent to show that its mark already had a reputation on the filing/priority date of the CTM application, while any subsequent loss of reputation is for the applicant to claim and prove. In practice, such an occurrence will be rather exceptional, since it presupposes a dramatic change of market conditions over a relatively short period of time.

Where the opposition is based on an earlier application, there is no formal obstacle for the application of Article 8(5) CTMR, which encompasses earlier applications by reference to Article 8(2) CTMR. Although in most cases the earlier application will not have acquired sufficient reputation in so short a time, it cannot be a priori excluded that a sufficient degree of reputation may be achieved in an exceptionally short period. In addition, the application may be for a mark which was already in use long before the application was filed and has had sufficient time to acquire a reputation. In any event, as the effects of registration are retroactive, the applicability of Article 8(5) CTMR to earlier applications cannot be regarded as a dev iation from the rule that Article 8(5) CTMR only applies to earlier registrations, as concluded in paragraph 2.1 above.

In general, the closer to the relevant date the evidence is, the easier it will be to assume that the earlier mark had acquired reputation at that time. The evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date. Evidence of reputation with regard to a later point in time than the relevant date might nevertheless allow the drawing of conclusions as to the reputation of the earlier mark at the relevant date (see, by analogy, order of 27/01/2004, C-259/02 ‘La Mer Technology’, para. 31; judgment of 17/04/2008, C-108/07 ‘Ferro’, para 53; judgment of 15/12/2005, T-262/04 ‘Shape of a l ighter’, para. 82).

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For this reason, the materials filed with a view to proving reputation must be dated, or at least clearly indicate when the facts attested therein took place. Consequently, undated documents, or documents bearing a date added afterwards (e.g. hand-written dates on pr inted documents), are not apt for giving reliable information about the material time.

Case No Comment

R 0055/2009-2 ‘BRAVIA’

The evidence showed that the mark ‘BRAVIA’ was used for LCD televisions in Poland, the Czech Republic, Slovakia, Hungary, Germany, Turkey, Portugal, Austria, France, Italy and the Netherlands. However, none of the documents were dated. The opponent failed to submit any information regarding duration. Therefore, the evidence, taken as whole, was insufficient to prove the reputation in the European Union (paras 27, 28).

R 1033/2009-4 ‘PEPE’

In the Board’s view, a judgment from 1972 was not able to prove enhanced distinctiveness at the time of filing the CTM, that is, 20/10/2006. Furthermore, ‘it follows from the decision of the CFI [T- 164/03] that the reputation of the earlier mark has been assessed as from 13 June 1996, i.e. more than ten years before the reputation date to be taken into consideration’ (para. 31).

If the period elapsed between the latest evidence of use and t he filing of the CTM application is quite significant, the relevance of the evidence should be carefully assessed by reference to the kind of goods and services concerned. This is because changes in consumer habits and perceptions may take some time to happen, usually depending on the particular market involved.

For instance, the clothing market is strongly tied to yearly seasons and to the different collections issued every quarter. This will have to be taken into account in assessing a possible loss of reputation in this particular field. Likewise, the market for internet providers and e-commerce companies is very competitive and knows rapid growth, as well as rapid demise, which means that reputation in this area may be diluted faster than in other market sectors.

Case No Comment

R 0883/2009-4 ‘MUSTANG’

The appellant failed to prove that its earlier mark was already well known on the application date of the contested CTM. The certificates regarding the reputation of the ‘Mustang designation’ refer neither to the asserted ‘Calzados Mustang’ figurative mark nor to the time when reputation must be determined (para. 28).

A similar question arises in the case of evidence that post-dates the filing date of the CTM application. Even though such evidence will not usually be sufficient on its own to prove that the mark had acquired a r eputation when the CTM was filed, it is not appropriate to reject it as irrelevant either. Given that reputation is usually built up over a period of years and cannot simply be switched on and off, and that certain kinds of evidence (e.g. opinion polls, affidavits) are not necessarily available before the relevant date, as they are usually prepared only after the dispute arises, such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence. For example, an opinion poll conducted after the material time but showing a sufficiently high degree of recognition might be sufficient to prove that the mark had acquired a reputation on the relevant date if it is also shown that the market conditions

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have not changed (e.g. the same levels of sales and adv ertising expenditure were maintained before the opinion poll was carried out).

Case No Comment

Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P

Although the reputation of an earlier mark must be established at the filing date of the contested mark, documents bearing a later date cannot be denied evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date (para. 52).

The possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on how close the period covered is to the filing date (see, by analogy, order of 27/01/2004, C-259/02 ‘La Mer Technology’, para. 31; judgment of 17/04/2008, C-108/07 P ‘Ferro’, para. 53; judgment of 15/12/2005, T-262/04 ‘Shape of a lighter’, para. 82).

Case No Comment

Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P

The press articles submitted proved that there was significant media coverage of the products marketed under the trade mark BOTOX on the filing date of the disputed marks (para. 53).

3.1.3 Assessment of reputation – relevant factors

Apart from indicating that ‘It cannot be i nferred from either the letter or the spirit of Article 5(2) of the [TMD] that the trade mark must be known by a given percentage of the public’, the Court also held that all the relevant facts must be considered in assessing the reputation of the earlier mark, ‘in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it’ (judgment of 14/11/1999, C-375/97 ‘General Motors’, paras 25, 27).

If these two statements are taken together, it follows that the level of knowledge required for the purposes of Article 8(5) CTMR cannot be defined in the abstract, but should be ev aluated on a case-by-case basis, taking into account not only the degree of awareness of the mark, but also any other fact relevant to the specific case, that is, any factor capable of giving information about the performance of the mark in the market.

The list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark (such as the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it) only serve as examples.

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Case No Comment

T-47/06 ‘Nasdaq’

The opponent provided detailed evidence relating to the intensity, geographical extent and duration of the use of its trade mark NASDAQ and the amount spent in promoting it, demonstrating that it was known by a significant part of the public concerned by it. The Court considered that the fact that it did not produce figures regarding the market share did not call this finding into question (para. 51). The Court concluded that the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serve as examples, as all the relevant evidence in the case must be taken into consideration and, second, the other detailed and verifiable evidence produced by the intervener is already sufficient in itself to conclusively prove the reputation of its mark NASDAQ (para. 52).

Moreover, the relevant factors should be assessed with a view not only to establish the degree of recognition of the mark amongst the relevant public, but also to ascertain whether the other requirements related to reputation are fulfilled, for example, whether the alleged reputation covers a significant part of the territory concerned or whether the reputation had indeed been acquired by the filing/priority date of the contested CTM application.

The same kind of test is applied to ascertain whether the trade mark has acquired enhanced distinctiveness through use for the purposes of Article 8(1)(b) CTMR, or whether the mark is well-known within the meaning of Article 6bis of the Paris Convention, since the subject-matter of proof in all these cases is in substance the same, namely the degree to which the mark is known by the relevant public, without prejudice to the threshold required in each case.

3.1.3.1 Trade mark awareness

The statement of the Court that ‘it is not necessary for the mark to be known by a given percentage of the public’, cannot be taken in itself as meaning that figures of trade mark awareness are irrelevant for, or that they should be given a lower probative value in, the assessment of reputation. It only implies that percentages of awareness defined in the abstract may not be appropriate for all cases and that, consequently, it is not possible to fix a pr iori a gener ally applicable threshold of recognition beyond which it should be assumed that the mark is reputed (see, to that effect and by analogy, judgment of 04/05/1999, joined cases C-108/97 and C -109/97 ‘Windsurfing Chiemsee’, para. 52; judgment of 22/06/1999, C-342/97 ‘Lloyd Schuhfabrik Meyer’, para. 24, judgment of 16/11/2011 T-500/10, ‘DORMA’, para. 52).

Therefore, even though not expressly listed by the Court among the factors to be taken into account for assessing reputation, the degree of recognition of the mark amongst the relevant public is directly relevant and can be particularly helpful in evaluating whether the mark is sufficiently known for the purposes of Article 8(5) CTMR, provided of course that the method of its calculation is reliable.

As a rule, the higher the percentage of trade mark awareness, the easier it will be to accept that the mark has a reputation. However, in the absence of a clear threshold, only if the evidence shows a high degree of trade mark awareness, will percentages of recognition be persuasive. Percentages alone are not conclusive. Rather, as explained before, reputation has to be evaluated by making an overall assessment of

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all the factors relevant to the case. The higher the degree of awareness, the less additional evidence may be required to prove reputation and vice versa.

Case No Comment

R 0765/2009-1 ‘BOB THE BUILDER (fig.)’

The evidence submitted proved that the earlier mark enjoyed a very significant reputation in Sweden for jellies’, jams, fruit stews, fruit drinks, concentrates for production of drinks and juice’. According to the survey conducted by TNS Gallup, the spontaneous awareness (answers by telephone to the question ‘What brands for – ‘the relevant group of products is mentioned’ – have you heard about or do you know about?’) for the trade mark ‘BOB’ varied between 25 and 71% depending on the goods: apple sauces, jams, marmalades, soft drinks, fruit drinks and fruit juices. The supported awareness (answer to a questionnaire showing the products bearing the mark) varied between 49 and 90% depending on the goods. Furthermore, the market share for 2001 to 2006 averaged 30-35% in the above product groups (para. 34).

Where the evidence shows that the mark only enjoys a lesser degree of recognition, it should not be automatically assumed that the mark is reputed, which means that, most of the time, mere percentages will not be conclusive in themselves. In such cases, only if the evidence of awareness is coupled with sufficient indications of the overall performance of the mark in the market will it be possible to evaluate with a reasonable degree of certainty whether the mark is known by a significant part of the relevant public.

3.1.3.2 Market share

The market share enjoyed by the goods offered or sold under the mark and t he position it occupies in the market are valuable indications for assessing reputation, as they both serve to indicate the percentage of the relevant public that actually buys the goods and to measure the success of the mark against competing goods.

Market share is defined as the percentage of total sales obtained by a br and in a particular sector of the market. When defining the relevant market sector, the goods and services for which the mark has been u sed must be t aken into account. If the scope of such goods and services is narrower than those for which the mark is registered, a situation of partial reputation arises, similar to the one where the mark is registered for a variety of goods, but has acquired a reputation only for part of them. This means that in such a case, only the goods and services for which the mark has actually been used and acquired a reputation will be taken into account for the purposes of the examination.

Therefore, a very substantial market share, or a leader position in the market, will usually be a strong indication of reputation, especially if combined with a reasonably high degree of trade mark awareness. Conversely, a small market share will in most cases be an indication against reputation, unless there are other factors which suffice on their own to support such a claim.

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Case No Comment

Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P

‘… the size of the market share of BOTOX in the United Kingdom, 74.3% in 2003, like the degree of awareness of the trade mark of 75% among the specialised public accustomed to pharmaceutical treatments against wrinkles, is sufficient to substantiate the existence of a considerable degree of recognition on the market’ (para. 76).

T-08/03 ‘Emilio Pucci’

The CFI considered that the opponent failed to prove the enhanced distinctiveness or reputation of its earlier trade marks, since the evidence submitted (advertisements, seven letters from a number of advertising directors and a v ideo cassette) did not include adequately substantiated or verifiable objective evidence to make it possible to assess the market share held by the marks EMIDIO TUCCI in Spain, how intensive, geographically widespread and long-standing use of the marks had been or the amount invested by the undertaking in promoting them (para. 73).

Another reason why a moderate market share will not always be conclusive against reputation is that the percentage of the public that in reality knows the mark may be much higher than the number of actual buyers of the relevant goods. This would be the case, for example, for goods that are normally used by more than one user (e.g. family magazines or newspapers) (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’ paras 35, 36 and judgment of 10/05/2007, T-47/06 ‘NASDAQ’ paras 47, 51) or for luxury goods, which many may know, but few can buy (e.g. a high percentage of European consumers know the trade mark ‘Ferrari’ for cars, but only few own one). For this reason, the market share proved by the evidence should be assessed taking into account the particularities of the specific market.

Case No Comment

R 1659/2011-2 ‘KENZO’

‘KENZO’ identifies, in the eyes of the European public, a pre- eminent provider of recognised fashion and luxury items in the form of perfumes, cosmetics and clothing. The relevant public however was considered to be the general public (para. 29).

In certain cases it will not be easy to define the market share of the earlier mark, for example when the exact size of the relevant market cannot be measured accurately, owing to peculiarities of the goods or services concerned.

Case No Comment

R 0446/2010-1 ‘TURBOMANIA’

The limited presence of the product on t he market by no means prevented it from becoming well known by the relevant public. The evidence clearly showed that the trade mark appeared continuously in specialist magazines for the market from December 2003 to March 2007 (the date of the Community trade mark application). That meant that the public targeted by the magazines had constant, on-going exposure to the opponent’s trade mark over a long period covering more than three years prior to the relevant date. Such a huge presence in the press specifically targeting the relevant public was more than sufficient evidence that the relevant public was aware of the trade mark (para. 31).

In such cases, other similar indications may be relevant, such as TV audience rates, as in the case of motor racing and other sporting or cultural events.

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Case No Comment

T-47/06 ‘NASDAQ’

The opponent submitted evidence showing that the mark ‘NASDAQ’ appeared almost daily, particularly by reference to the Nasdaq indices, in many newspapers and on many television channels that can be read/viewed throughout Europe. The opponent also submitted evidence of substantial investments in advertising. The Court found reputation proven, even though the opponent did not submit any market share figures (paras 47-52).

3.1.3.3 Intensity of use

The intensity of use of a mark may be demonstrated by sales volumes (i.e. the number of units sold) and turnover (i.e. the total value of those sales) attained by the opponent for goods bearing the mark. Usually, the relevant figures correspond to sales in one year, but there may be cases where the time unit used is different.

Case No Comment

R 2100/2010-1 ‘SEXIALIS’

The documents submitted (press articles, sales figures, surveys) showed that the earlier sign ‘CIALIS’ was intensively used before the filing date of the CTM application, that the products under the mark ‘CIALIS’ were marketed in several Member States where they enjoyed a consolidated position among the leading brands, and that there was a high degree of recognition in comparison to the market leader ‘VIAGRA’. Large and c onstantly growing market share and sales numbers also showed ‘the vast expansion of ‘CIALIS’ ’ (para. 55).

In evaluating the importance of a given turnover or sales volume, account should be taken of how large the relevant market is in terms of population, as this has a bearing on the number of potential purchasers of the products in question. For example, the relative value of the same number of sales will be m uch bigger, for example, in Luxembourg than in Germany.

Moreover, whether or not a given sales volume or turnover is substantial will depend on the kind of product concerned. For example, it is much easier to achieve a high sales volume for everyday, mass consumption goods than for luxury or durable products that are bought rarely, without this meaning that in the former case more consumers have come into contact with the mark, as it is likely that the same person has bought the same product more than once. It follows that the kind, value and dur ability of the goods and services in question should be taken into consideration in determining the significance of a given sales volume or turnover.

Figures of turnover and sales will be more useful as indirect indications that should be assessed in conjunction with the rest of the evidence, rather than as direct proof of reputation. In particular, such indications can be especially helpful for completing the information given by percentages as regards market share and a wareness, by giving a more realistic impression of the market. For example, they may reveal a very large amount of sales behind a not-so-impressive market share, which may be useful in assessing reputation in the case of competitive markets, where it is in general more difficult for a single brand to account for a substantial portion of the overall sales.

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In contrast, where the market share of the products for which the mark is used is not given separately, it will not be pos sible to determine whether a g iven turnover corresponds to a substantial presence in the market or not, unless the opponent also submits evidence showing the overall size of the relevant market in terms of money, so that its percentage in it may be inferred.

Case No Comment

R 1054/2007-4 ‘mandarino’ (fig.)

The reputation was not sufficiently proven in particular because none of the documents referred to the recognition of the earlier trade mark by the relevant end consumers. Nor was any evidence about the market share of the opponent’s goods submitted. Information about the market share is particularly important in the sector in which the opponent had its core business (handbags, transport items, accessories and clothing) which is ‘a quite atomized and competitive sector’ and there are many different competitors and designers in that product range (paras 59-61).

This does not mean that the importance of turnover figures or volume of sales should be underestimated, as both are significant indications of the number of consumers that are expected to have encountered the mark. Therefore, it cannot be excl uded that a substantial amount of turnover or sales volume may, in certain cases, be decisive for a finding of reputation, either alone, or in conjunction with very little other evidence.

Case No Comment

R 0445/2010-1 ‘FLATZ’

Although, for reasons of force majeure, it was not possible for the earlier trade mark to become well known by traditional methods, that is, through selling the product, it did become extremely well known as a result of promotional activities, by publicising the trade mark extensively, continually and constantly in the specialist press and at sectorial fairs, thereby reaching virtually the whole of the three relevant sectors of the public. The limited presence of the product on the market by no means prevented it from becoming well known by the relevant public that, on the relevant date, FLATZ was the trade mark with which the opponent identified its electronic bingo machines (paras 41, 42, 50, 51).

R 1466/2008-2 and R1565/2008-2, ‘COMMERZBANK ARENA’

The lack of figures regarding the market share held by the trade mark ‘ARENA’ in the relevant countries was not in itself capable of calling the finding of reputation into question. First, the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serves to illustrate examples, as all the relevant evidence in the case must be taken into consideration and, second, the other detailed and verifiable evidence submitted by the opponent is already sufficient in itself to prove conclusively the substantial degree of recognition of the ‘ARENA’ mark amongst the relevant public (para. 59).

However, as this would deviate from the rule that reputation has to be evaluated by making an overall assessment of all factors relevant to the case, findings of reputation based almost exclusively on s uch figures should be g enerally avoided, or at least confined to exceptional cases that would really justify such a finding.

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3.1.3.4 Geographical extent of use

Indications of the territorial extent of use are mainly useful for determining whether the alleged reputation is widespread enough to cover a substantial part of the relevant territory, within the sense given in paragraph 3.1 above. In this assessment, account should be taken of the density of population in the respective areas, as the critical criterion is the proportion of consumers knowing the mark, rather than the size of the geographical area as such. Similarly, what is important is public awareness of the mark rather than availability of goods or services. A mark may, therefore, have a territorially widespread reputation on the basis of advertising, promotion, media reports, etc.

In general, the more widespread the use, the easier it will be to conclude that the mark has passed the required threshold, whereas any indication showing use beyond a substantial part of the relevant territory will be a pos itive sign in the direction of reputation. Conversely, a very limited amount of use in the relevant territory will be a strong indication against reputation, as for example where the vast majority of the goods are exported to a third jurisdiction in sealed containers, directly from their place of production.

Case No Comment

R 0966/2010-1 ‘ERT (fig.)’

If the earlier mark were so well known in the 27 Member States of the EU for TV broadcasting and magazines, it should have been easy for the opponent to provide information about ‘the reach of the mark’ just before 2008, when the CTM application was filed. The magazine sales figures did not cover the right period. The submitted documents did not give any indication of the extent to which the public was aware of the mark (paras 16, 18).

However, evidence of actual use in the relevant territory should not be regarded as a necessary condition for the acquisition of reputation, as what matters most is knowledge of the mark and not how it was acquired.

Such knowledge may be generated by, for example, intensive advertising prior to the launching of a new product, or in the case of important cross-border shopping it may be fuelled by a significant price difference in the respective markets, a phenomenon often referred to as ‘territorial spill-over’ of reputation from one t erritory to another. However, when it is claimed that such circumstances have occurred, the corresponding evidence must demonstrate this. For example, it cannot be assumed, merely because of the principle of free trade in the European Union, that goods put in the market in Member State X have also penetrated the market of Member State Y in significant numbers.

3.1.3.5 Duration of use

Indications of the duration of use are particularly useful for determining the longevity of the mark. The longer the mark has been used in the market, the larger will be the number of consumers that are likely to have encountered it, and the more likely it is that such consumers will have encountered the mark more than once. For example, a market presence of 45, 50 or 100-plus years is considered a s trong indication of reputation.

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Case No Comment

R 1466/2008-2 and R 1565/2008-2, ‘COMMERZBANK ARENA’

The evidence submitted showed a particularly impressive duration of use (over thirty years) and geographical extent of use (over seventy-five countries worldwide, including the Member States concerned) of the ‘ARENA’ brand (para. 55).

T-369/10 ‘BEATLE’ (appeal dismissed in C-294/12 P)

The Beatles group was considered to be a gr oup with an exceptional reputation lasting for more than 40 years (para. 36).

The duration of use of the mark should not be inferred by mere reference to the term of its registration. Registration and use do not necessarily coincide, as the mark may have been put to actual use either before or after it was filed. Therefore, where the opponent invokes actual use, going beyond the term of registration, it must prove that such use actually began before it applied for its mark.

Nevertheless, a long registration period may sometimes serve as an indirect indication of a long presence on the market, as it would be unusual for a proprietor to maintain a registered mark for many decades without any economic interest behind it.

In the end, the decisive element is whether the earlier mark had acquired a reputation at the time of filing of the contested application. Whether that reputation also existed at some earlier point in time is legally irrelevant. Therefore, evidence of continuous use up to the filing date of the application will be a positive indication in the direction of reputation.

In contrast, if the use of the mark was suspended over a significant period, or if the period elapsed between the latest evidence of use and the filing of the CTM application is quite long, it will be more difficult to conclude that the reputation of the mark survived the interruption of use, or that it subsisted until the filing date of the application (see paragraph 3.1.2.5 above).

3.1.3.6 Promotional activities

The nature and scale of the promotional activities undertaken by the opponent are useful indications in assessing the reputation of the mark, to the extent that these activities were undertaken to build-up a b rand image and enhanc e trade mark awareness among the public. Therefore, a long, intensive and widespread promotional campaign may be a strong indication that the mark has acquired a reputation among the potential or actual purchasers of the goods in question, and may actually have become known beyond the circle of the actual purchasers of those goods.

Case No Comment

C-100/11 P ‘BOTOCYL’

Evidence of the promotion of ‘BOTOX’ in English in scientific and general-interest press was sufficient to establish reputation of the mark both amongst the general public and amongst health-care professionals (paras 65, 66).

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Case No Comment

R 0445/2010-1 ‘FLATZ’

Although, for reasons of force majeure, it was not possible for the earlier trade mark to become well known by traditional methods, that is, through selling the product, it did become extremely well known as a result of promotional activities, by publicising the trade mark extensively, continually and constantly in the specialist press and at sectorial fairs, thereby reaching virtually the whole of the three relevant sectors of the public. The limited presence of the product on the market by no means prevented it from becoming well known by the relevant public that, on the relevant date, FLATZ was the trade mark with which the opponent identified its electronic bingo machines (paras 41, 42, 50, 51).

R 1659/2011-2 ‘KENZO’ and R 1364/2012-2 ‘KENZO’

The opponent’s goods have been advertised and articles have been written about them in many of the world’s leading fashion- related lifestyle magazines, and in some of Europe’s leading mainstream periodicals. In line with the case-law, the reputation of ‘KENZO’ for the said goods is confirmed. The goods for which the earlier mark has reputation are cosmetics, perfumes and clothing. Because of its substantial reputation, the earlier mark ‘KENZO’ possesses an ‘undisputable allure’ that can be transferred to nearly any luxury product (para. 33). Subsequent case confirmed reputation (para. 33).

Even though it cannot be ruled out that a mark acquires a reputation before any actual use, promotional activities will usually not be sufficient on their own for establishing that the earlier mark has indeed acquired a reputation (see paragraph 3.1.3.4 above). For example, it will be difficult to prove knowledge amongst a significant part of the public exclusively by reference to promotion or advertising, carried out as preparatory acts for the launching of a new product, as the actual impact of publicity on the perception of the public will be difficult to measure without reference to sales. In such situations, the only means of evidence available to the opponent are opinion polls and s imilar instruments, the probative value of which may vary depending of the reliability of the method used, the size of the statistical sample etc. (for the probative value of opinion polls, see paragraph 3.1.4 below).

The impact of the opponent’s promotional activities may be shown either directly, by reference to the amount of promotional expenditure, or indirectly, by way of inference from the nature of the promotional strategy adopted by the opponent and the kind of medium used for advertising the mark.

For example, advertising on a na tion-wide TV channel or in a pr estigious periodical should be given more weight than campaigns of a regional or local scope, especially if coupled with high audience or circulation figures. Likewise, the sponsoring of prestigious athletic or cultural events may be a further indication of intensive promotion, as such schemes often involve a considerable investment.

Case No Comment

R 1673/2008-2 ‘FIESTA’

It is apparent from Ferrero’s various advertising campaigns on Italian television (including Rai) that the earlier mark was widely exposed to viewers in 2005 and 2006. Many of these spots appear to have been broadcast in peak viewing times (e.g. during Formula 1 Grand Prix coverage) (para. 41).

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Furthermore, the contents of the advertising strategy chosen by the opponent can be useful for revealing the kind of image the opponent is trying to create for its brand. This may be of particular importance when assessing the possibility of detriment to, or of taking unfair advantage of, a particular image allegedly conveyed by the mark, since the existence and contents of such an image must be abundantly clear from the evidence submitted by the opponent (see paragraph 3.4 below).

Case No Comment

T-332/10 ‘VIAGUARA’ (‘VIAGRA’)

The General Court found that in regard to the nature of the goods concerned, the BoA rightly considered that the aphrodisiac and stimulating properties claimed for commercial purposes for the non- alcoholic beverages covered by Class 32 coincide with the therapeutic indications of the earlier mark’s goods or at least with the images it projects, namely an image of pleasure, vitality, strength and youth (para. 66).

R 0306/2010-4 ‘CARRERA’ (under appeal T-0173/11)

The opponent’s trade mark is not only known per se, but due to the high price of sports cars and the opponent’s intensive expenditure on advertising and against the background of its successes in racing, the public associates it with an image of luxury, high tech and high performance (para. 31).

3.1.3.7 Other factors

The Court has made clear that the above list of factors is only indicative and has underlined that all the facts relevant to the particular case must be taken into consideration in assessing the reputation of the earlier mark (judgment of 14/09/1999, C-375/97 ‘General Motors’, para. 27). Other factors may be found in the case-law of the Court dealing with enhanced distinctiveness through use, or in the WIPO Recommendations on the protection of well-known marks. Therefore, depending on their relevance in each case, the following may be added t o the above factors: record of successful enforcement; number of registrations; certifications and awards; and the value associated with the mark.

Record of successful enforcement

Records of successful enforcement of a mark against dissimilar goods or services are important because they may demonstrate that, at least in relation to other traders, there is acceptance of protection against dissimilar goods or services.

Such records may consist of successful prosecution of complaints outside the courts, such as acceptance of cease and desist requests, delimitation agreements in trade mark cases, and the like.

Furthermore, evidence showing that the reputation of the opponent’s mark has been repeatedly recognised and protected against infringing acts by decisions of judicial or administrative authorities will be an important indication that the mark enjoys a reputation in the relevant territory, especially where such decisions are recent. That effect may be reinforced when the decisions of this kind are substantial in number (on the probative value of decisions, see paragraph 3.1.4.4 below). This factor is mentioned in Article 2(1)(b)(5) of the WIPO Recommendations.

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Number of registrations

The number and duration of registrations and applications of the mark around Europe or the world is also relevant, but in itself it is a weak indication of the degree of recognition of the sign by the relevant public. The fact that the opponent has many trade mark registrations and in many classes may indirectly attest to an international circulation of the brand, but cannot be decisively prove in itself a reputation. This factor is mentioned in Article 2(1)(b)(4) of the WIPO Recommendations, where the need of actual use is made clear: the duration and geographical area of any registrations, and/or any applications for registration, of the mark are relevant ‘to the extent that they reflect use or recognition of the mark’.

Certifications and awards

Certifications, awards, and similar public recognition instruments usually provide information about the history of the mark, or reveal certain quality aspects of the opponent’s products, but as a rule they will not be sufficient in themselves to establish reputation and will be more useful as indirect indications. For example, the fact that the opponent has been a holder of a royal warrant for many years may perhaps show that the mark invoked is a t raditional brand, but cannot give first-hand information about trade mark awareness. However, if the certification concerns facts that are related to the performance of the mark, its relevance will be much higher. This factor is mentioned by the Court in ‘Lloyd Schuhfabrik Meyer’ and ‘Windsurfing Chiemsee’ in relation to the assessment of enhanced distinctiveness through use.

Case No Comment

R 1637/2011-5 ‘APART’

The new evidence submitted by the appellant and accepted by BoA shows that the earlier mark had consistently been granted a high brand rating as well as prizes in surveys carried out by specialised companies in Poland between 2005 and 2009 (para. 30). It was therefore considered that the appellant successfully proved reputation in Poland for jewellery, but did not prove reputation for the other goods and services covered by its earlier signs.

The value associated with the mark

The fact that a mark is solicited by third companies for reproduction on their products, either as a trade mark, or as mere decoration, is a strong indication that the mark possesses a hi gh degree of attractiveness and an i mportant economic value. Therefore, the extent to which the mark is exploited through licensing, merchandising and sponsoring, as well as the importance of the respective schemes, are useful indications in assessing reputation. This factor is mentioned in Article 2(1)(b)(6) of the WIPO Recommendations.

3.1.4 Proof of reputation

3.1.4.1 Standard of proof

The opponent must submit evidence enabling the Office to reach a positive finding that the earlier mark has acquired a r eputation in the relevant territory. The wording

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used in Article 8(5) CTMR and Rule 19(2)(c) CTMIR is quite clear in this respect: the earlier mark deserves enlarged protection only if it ‘has a reputation’.

It follows that the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public. The reputation of the earlier mark must be established to the satisfaction of the Office and not merely assumed.

3.1.4.2 Burden of proof

According to the second sentence of Article 76(1) CTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. It follows that in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a r esult of its own private knowledge of the market nor conduct an ex -officio investigation, but should exclusively base its findings on the information and evidence submitted by the opponent.

Exceptions to this rule apply where particular facts are so well-established that they can be considered as universally known and, thus, are also presumed to be known to the Office (e.g. the fact that a particular country has a certain number of consumers, or the fact that food products target the general public). However, whether or not a mark has passed the threshold of reputation established by the Court in General Motors is not in itself a pure question of fact, since it requires the legal evaluation of several factual indications, and, as such, the reputation of the earlier mark may not be simply assumed to be a universally known fact.

Case No Comment

T-185/02 ‘PICARO’ (confirmed by C-361/04 P)

The Board of Appeal, in addition to the facts expressly put forward by the parties, may take into consideration facts which are well known, that is, which are likely to be k nown by anyone or which may be learnt from generally accessible sources. ‘It must be borne in mind, at the outset, that the legal rule stated in Article 76(1) in fine of Regulation No 40/94 constitutes an exception to the principle of examination of the facts by OHIM of its own motion, laid down in limine by that provision. That exception must therefore be given a strict interpretation, defining its extent so as not to exceed what is necessary for achieving its object’ (paras 29-32).

R 1472/2007-2 ‘El Polo’

It is common knowledge that the earlier mark is indeed a v ery famous brand, not only in France, but in most European countries, in large part due to the public’s exposure to products at airport and duty free boutiques as well as long-standing advertising in widely circulated magazines. The weight of evidence required to support statements which are universally known to be true need not be great (para. 32).

Rule 19(2)(c) CTMIR provides that the burden of putting forward and proving the relevant facts lies with the opponent, by expressly requiring it to provide ‘evidence attesting that the earlier mark has a r eputation’. According to Rule 19(1) and Rule 19(2)(c) CTMIR and Office practice, such evidence may be s ubmitted either together with the notice of opposition, or subsequently within four months of the date of notification of the opposition to the applicant. The opponent may also refer to facts and evidence submitted in the course of another opposition, provided that the relevant

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materials are indicated in a c lear and unam biguous way and t hat the language of proceedings is the same in both cases.

If the evidence of reputation is not in the correct language, it will have to be translated into the language of the proceedings within the same period of four months, as required by Rules 16(1) and 17( 3) CTMIR. However, in view of the volume of documents often needed for proving reputation, it is sufficient to translate only the material parts of long documents or publications. Similarly, it is not necessary to translate in their entirety documents or parts of documents that contain mainly figures or statistics, the meaning of which is evident, as is often the case with invoices, order forms, diagrams, brochures, catalogues etc.

Case No Comment

R 1472/2007-2 ‘El Polo’

Although there is a requirement to adduce evidence to substantiate the existence of an earlier right in the language of the opposition proceedings, it is not specified that such translations have to be in any specific format. Many opponents simply provide their own, often hand-written, translations of the registration details. It is primarily for the Office and, to a lesser extent, for the applicant to check the accuracy of these translations. If a t ranslation is incorrect, the document cannot be relied upon (para. 17).

3.1.4.3 Evaluation of the evidence

The basic rules on the evaluation of evidence are also applicable here: the evidence should be assessed as a whole, that is, each indication should be weighed-up against the others, whereas information confirmed by more than one source will generally be more reliable than facts derived from isolated references. Moreover, the more independent, reliable and well-informed the source of the information is, the higher the probative value of the evidence will be.

Therefore, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, as for example when the opponent submits internal memoranda or tables with data and figures of unknown origin.

Case No Comment

R 0295/2009-4 ‘PG PROINGEC CONSULTORIA (fig.)’

The content of the documentation submitted does not clearly demonstrate that the earlier marks enjoy a reputation. The documentation emanates, in the main, from the respondent directly and contains information taken from the respondent’s trade catalogues, and its own advertising and documents downloaded from its website. There is insufficient documentation/information from third parties to reflect clearly and objectively what the respondent’s position on the market precisely is. Reputation not proved (para. 26).

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Case No Comment

T-500/10 ‘doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS’ (fig.)

As regards documents in the case-file which come from the company itself, the General Court has held that to assess the evidential value of such a document, first and foremost account should be taken of the credibility of the account it contains. The Court added that it is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, prima facie, the documents appear sound and reliable (para. 49).

However, if such information is publicly available or has been c ompiled for official purposes and contains information and da ta that have been ob jectively verified, or reproduces statements made in public, its probative value is generally higher.

As regards its contents, the more indications the evidence gives about the various factors from which reputation may be inferred, the more relevant and conclusive it will be. In particular, evidence which as a whole gives little or no quantitative data and information will not be appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, will not be sufficient to support a finding of reputation.

3.1.4.4 Means of evidence

There is no direct indication in the Regulations as to which kind of evidence is more appropriate for proving reputation, as for instance the one in Rule 22(4) CTMIR about evidence of use. The opponent may avail itself of all the means of evidence of Article 78(1) CTMR, provided they are capable of showing that the mark has indeed the required reputation.

The following means of evidence are more frequently submitted by opponents in Opposition proceedings before the Office (this list does not reflect their relative importance or probative value):

1. sworn or affirmed statements 2. decisions of Courts or Administrative authorities 3. decisions of the Office 4. opinion polls and market surveys 5. audits and inspections 6. certifications and awards 7. articles in the press or in specialised publications 8. annual reports on economic results and company profiles 9. invoices and other commercial documents 10. advertising and promotional material.

Evidence of this kind may also be s ubmitted under Article 8(1)(b) CTMR in order to prove that the earlier mark has obtained a higher degree of distinctiveness, or under Article 8(2)(c) CTMR in relation to well-known marks.

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Sworn or affirmed statements

The weight and probative value of statutory declarations is determined by the general rules applied by the Office to the assessment of such evidence. In particular, both the capacity of the person giving the evidence and the relevance of such evidence to the particular case must be taken into account. For further details on t he weight and probative value of affidavits, see the Guidelines, Part C, Opposition, Section 6, Proof of Use.

Case No Comment

R 0729/2009-1 ‘SKYBLOG’

The statement submitted by an expert consultancy firm in the area of digital media strategy in the UK attests to the opponent ‘as the leading supplier of digital television in the UK’ and that ‘Sky’ has an enormous and impressive reputation (para. 37).

Decisions of Courts or Administrative authorities

Opponents often invoke decisions of national authorities or Courts which have accepted the reputation of the earlier mark. Even though national decisions are admissible evidence and may have evidentiary value, especially if they originate from a Member State the territory of which is also relevant for the opposition at hand, they are not binding for the Office, in the sense that it is not mandatory to follow their conclusion.

Case No Comment

T-0192/09 ‘SEVE TROPHY’

As far as judgments of Spanish courts are concerned, the Community trade mark system is an autonomous system, consisting of a s et of rules and objectives that are specific, and applied independently of any national system (para. 79).

Since such decisions may serve to indicate reputation and to record successful enforcement of the mark, their relevance should be addressed and examined. Relevance should be given to the type of proceedings involved, to whether the issue was in fact reputation within the sense of Article 8(5) CTMR, to the level of the court, as well as to the number of such decisions.

Case No Comment

C-100/11 P ‘BOTOCYL’

Decisions of the UK national office related to the reputation of ‘BOTOX’ are facts that may, if relevant, be taken into account by the General Court, despite the CTM owners not being parties in those decisions (para. 78).

There might be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences as to how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given to it in national proceedings. Furthermore, national instances may be able to take into account ex officio facts known to them directly, whereas the Office may not, pursuant to Article 76 CTMR.

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For these reasons, the probative value of national decisions will be considerably enhanced if the conditions of law and facts on the basis of which they were taken are made abundantly clear. This is because, in the absence of these elements, it will be more difficult both for the applicant to exercise its right of defence and for the Office to assess the decision’s relevance with a reasonable degree of certainty. Similarly, if the decision is not yet final, or if it is outdated due to the time that has elapsed between the two cases, its probative value will be diminished accordingly.

Consequently, the probative value of national decisions should be assessed on the basis of their contents and it may vary depending on the case.

Decisions of the Office

The opponent may also refer to earlier decisions of the Office, on condition that such a reference is clear and unambiguous, and that the language of the proceedings is the same. Otherwise, the opponent must also file a t ranslation of the decision within the four-month period to file further facts, evidence and arguments, in order to allow the applicant to exercise its right of defence.

As regards the relevance and probative value of previous Office decisions, the same rules as for national decisions apply. Even where the reference is admissible and the decision is relevant, the Office is not bound to come to the same conclusion and must examine each case on its own merits.

It follows that previous Office decisions only have a relative probative value and should be evaluated in conjunction with the rest of the evidence, especially where the reference of the opponent does not extend to the materials filed in the first case, that is, where the applicant has not had a chance to comment on them, or where the time that has elapsed between the two cases is quite long.

Case No Comment

R 0141/2011-1 ‘GUSSACI GUSSACI GUSSACI GUSSACI’ (fig.)

The finding of reputation is confirmed by the previous decision of the Boards of Appeal, according to which ‘GUCCI’ was considered to be one of the world’s leading brands in the field of luxury goods, and r eputation of the mark ‘GUCCI’ as well as the letter ‘G’, in its various configuration as an abbreviation for ‘GUCCI’, was found. In particular, reputation was found for the following goods: watches and jewellery (decision of 14/042011, R 143/2010-1, ‘GUDDY / GUCCI’), clothing, handbags, leather goods, luggage, shoes, gift, jewellery, fragrance and eyewear (decision of 11/02/2010, R 1281/2008-1 ‘G’ (fig.) / ‘G’ (fig.) et al.), clothing, handbags, leather goods, luggage and shoes (decision of 17/03/2011, R 543/2010-1, ‘G’ (fig.) / ‘G’ (fig.) et al.) (para. 18).

Opinion polls and market surveys

Opinion polls and m arket surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitors’ goods.

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The probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and t he accuracy of the information it provides, and by the reliability of the applied method.

More particularly, in evaluating the credibility of an opinion poll or market survey, the Office needs to know the following.

1. Whether or not it has been conducted by an i ndependent and recognised research institute or company, in order to determine the reliability of the source of the evidence.

2. The number and profile (sex, age, occupation and bac kground) of the interviewees, in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the goods in question. In principle, samples of 1 000 – 2 000 interviewees are considered sufficient, provided they are representative of the type of consumer concerned.

3. The method and circumstances under which the survey was carried out and the complete list of questions included in the questionnaire. It is also important to know how and in what order the questions were formulated, in order to ascertain whether the respondents were confronted with leading questions.

4. Whether the percentage reflected in the survey corresponds to the total amount of persons questioned or only to those who actually replied.

Unless the above indications are present, the results of a market survey or opinion poll should not be considered of high probative value, and will not in principle be sufficient on their own to support a finding of reputation.

Case No Comment

R 0925/2010-2 ‘1 CLEAN! 2 FRESH! 3 STRONG!’ (fig.)

The cancellation applicant did not submit sufficient proof of the reputation of its trade marks. According to the extracts from the 2001 survey conducted in Italy, although the level of ‘prompted recognition’ stands at 86 %, the rate of ‘spontaneous recognition’ is only 56 %. Moreover, no indication is given of the questions put to the people surveyed, making it impossible to determine whether the questions were really open and unassisted. The survey further fails to state for which goods the trade mark is known (para. 27).

Likewise, if the above indications are given, but the reliability of source and method are questionable or the statistical sample is too small, or the questions were leading, the credibility of the evidence will be diminished accordingly.

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Case No Comment

R 1191/2010-4 ‘MÁS KOLOMBIANA …Y QUÉ MÁS!! (fig.)’

The survey submitted by the opponent does not provide conclusive information to demonstrate that the earlier sign is well-known to the Spanish public for aerated waters as the interviewees were carefully selected on the basis of their origin, that is, Colombians resident in Spain. This is only a very small part of the population living in Spain. The sales figures, publicity investment and presence in publications directed at the immigrant public, contained in the statement before a notary public, are likewise in insufficient amounts for a finding that the earlier sign is well-known. Moreover, the statements are not corroborated by conclusive data on the extent or turnover of the goods (para. 23).

R 1345/2010-1 ‘Fukato Fukato (fig.)’

In support of its claim under Article 8(5) CTMR, the opponent relies exclusively on an opinion poll that was carried out in 2007. That opinion poll was conducted by an independent company. In principle, samples of 1 000–2 000 interviewees are considered sufficient, provided they are representative of the type of consumer concerned. The opponent’s opinion poll was based on a sample of 500 interviewees, which is not sufficient in respect of the services for which reputation is claimed. According to the opinion poll, the logo of the earlier mark has been associated especially with services in the financial and insurance fields. Since the opposition is only based on Class 42 with regard to the earlier Community trade mark, it does not cover financial and i nsurance services. Consequently, the submitted opinion poll is not suitable proof of the reputation of the opponent’s Community trade mark (para. 58).

Conversely, opinion polls and m arket surveys that fulfil the above requirements (independence and trustworthiness of source, reasonably large and widespread sample and reliable method) will be a s trong indication of reputation, especially if they show a high degree of trade mark awareness.

Audits and inspections

Audits and inspections of the opponent’s undertaking may provide useful information about the intensity of use of the mark, as they usually comprise data on f inancial results, sales volumes, turnovers, profits etc. However, such evidence will be pertinent only if it specifically refers to the goods sold under the mark in question, rather than to the opponent’s activities in general.

Audits and i nspections may be c arried out on t he initiative of the opponent itself, or may be required by company law and/or financial regulations. In the former case, the same rules as for opinion polls and m arket surveys apply, that is, the status of the entity conducting the audit and the reliability of the applied method will be of essence for determining its credibility, whereas the probative value of official audits and inspections will be as a rule much higher, since they are usually conducted by a state authority or by a r ecognised body of auditors, on t he basis of generally accepted standards and rules.

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Certifications and awards

This kind of evidence includes certifications and awards by public authorities or official institutions, such as chambers of commerce and industry, professional associations and societies, consumer organisations etc.

The reliability of certifications by authorities is generally high, as they emanate from independent and specialised sources, which attest facts in the course of their official tasks. For example, the average circulation figures for periodicals issued by the competent press-distribution associations are conclusive evidence about the performance of a mark in the sector.

Case No Comment

R 0907/2009-2 ‘O2PLS’

The many brand awards won by the mark were considered an important part of the evidence to show reputation together with the huge advertising investments and the number of articles published in different publications (para. 9(iii) and para. 27).

The same applies to quality certifications and awards granted by such authorities, as the opponent usually has to meet objective standards in order to receive the award. Conversely, prizes and awards offered by unknown entities, or on the basis of unspecified or subjective criteria, should be given very little weight.

The relevance of a c ertification or award to the specific case largely depends on i ts contents. For example, the fact that the opponent is a holder of an ISO 9001 quality certificate, or of a royal warrant, does not automatically mean that the sign is known to the public. It only means that the opponent’s goods meet certain quality or technical standards or that it is a supplier of a royal house. However, if such evidence is coupled with other indications of quality and market success, it may lead to the conclusion that the earlier mark has a reputation.

Articles in the press or in specialised publications

The probative value of press articles and other publications concerning the opponent’s mark mainly depends on whether such publications are covert promotional matter, or if, on the contrary, they are the result of independent and objective research.

Case No Comment

Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P

The very existence of articles in a scientific publication or the general-interest press constitutes a r elevant factor in establishing the reputation of the products marketed under the trade mark BOTOX with the general public, irrespective of the positive or negative content of those articles (para. 54).

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Case No Comment

R 0555/2009-2 ‘BACI MILANO’ (fig.)

The reputation of the earlier trade mark in Italy was proven by the copious amount of documentation submitted by the opponent, which included, inter alia, an article from Economy revealing that in 2005 the ‘BACI & ABBR ACCI’ trade mark was one of the fifteen most counterfeited fashion brands in the world; an article published in Il Tempo on 05/08/2005, in which the ‘BACI & ABBRACCI’ trade mark is mentioned alongside others, including Dolce & Gabbana, Armani, Lacoste and Puma, as being targeted by counterfeiters; an article published in Fashion on 15/06/2006, in which the trade mark is defined as ‘a true market phenomenon’; publicity campaigns from 2004 to 2007, with testimonials from entertainment and sports celebrities; a market survey conducted by the renowned independent agency Doxa in September 2007, from which it emerges that the trade mark is at the top of mind in the fashion sector for 0.6% of the Italian public (para. 35).

Hence, if such articles appear in publications of a hi gh status or are written by independent professionals, they will have a quite high value, as for example when the success of a specific brand becomes the object of a case study in specialised journals or in scientific publications. The presence of a mark in a dictionary (which is not a press article but is still a publication) is a means of evidence with high value.

Case No Comment

Joined cases T-345/08 and T-357/08 ‘BOTOCYL’, confirmed by C-100/11 P

The inclusion of a word in a dictionary is the expression of a fair amount of recognition on the part of the public. The references in the 2002 and 2003 editions of a number of dictionaries published in the United Kingdom constitute one of the items of evidence which may establish the reputation of the trade mark BOTOX in that country or amongst the English-speaking public of the European Union. (paras 55, 56).

Annual reports on economic results and company profiles

This type of evidence includes all kinds of internal publications giving varied information about the history, activities and per spectives of the opponent’s company, or more detailed figures about turnovers, sales, advertising etc.

To the extent that such evidence derives from the opponent and is mainly intended to promote its image, its probative value will mostly depend on i ts contents and the relevant information should be t reated with caution, especially if it mainly consists of estimates and subjective evaluations.

However, where such publications are circulated to clients and other interested circles and contain objectively verifiable information and data, which may have been compiled or revised by independent auditors (as is often the case with annual reports), their probative value will be substantially enhanced.

Invoices and other commercial documents

All kinds of commercial documents may be grouped under this heading, such as invoices, order forms, distribution and s ponsoring contracts, samples of

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correspondence with clients, suppliers or associates etc. Documents of this sort may provide a great variety of information as to the intensity of use, the geographical extent and duration of the use of the mark.

Even though the relevance and credibility of commercial documents is not disputed, it will be generally difficult to prove reputation on the basis of such materials alone, given the variety of factors involved and the volume of documents required. Furthermore, evidence such as distribution or sponsoring contracts and commercial correspondence are more appropriate for giving indications about the geographical extent or the promotional side of the opponent’s activities, than for measuring the success of the mark in the market and thus may only serve as indirect indications of reputation.

Case No Comment

R 1272/2010-1 ‘GRUPO BIMBO’ (fig.) (T-357/11)

The evidence submitted shows a high level of recognition of the mark on the Spanish market. The total invoices on the Spanish tin- loaf market in 2004 amounted to EUR 346.7 million, of which the opponent’s invoices amounted to EUR 204.9 million. The submitted invoices cover advertisements on TV, as well as in newspapers and magazines. Therefore, the reputation of ‘BIMBO’ in Spain for industrially produced bread has been substantiated (para. 64). The Court did not address this point.

Advertising and promotional material

This kind of evidence may take various forms, such as press cuttings, advertising spots, promotional articles, offers, brochures, catalogues, leaflets etc. In general, such evidence cannot be conclusive of reputation on its own, due to the fact that it cannot give much information about actual trade mark awareness.

However, some conclusions about the degree of exposure of the public to advertising messages concerning the mark may be drawn by reference to the kind of the medium used (national, regional, local) and to the audience rates or circulation figures attained by the relevant spots or publications, if of course this kind of information is available.

Case No Comment

R 0043/2010-4 ‘FFR’ (fig.) (T-143/11)

The documents submitted show that the device of a black rooster has acquired reputation and will be associated with wines from the Chianti Classico-region. The opponent provided several copies of advertisements in newspapers and magazines showing its promotional activity as well as independent articles displaying a black rooster in connection with the Chianti Classico region. However, given that the reputation only pertains to the device of a black rooster and given that this device is only one part of the earlier marks, serious doubts arise about whether reputation can be attributed to the marks as a w hole. Moreover, for the same reason, doubt also arises about which marks the reputation could be attributed to, given that the opponent owns several marks. (paras 26, 27). The Court did not assess the evidence on reputation.

In addition, such evidence may give useful indications of the kind of goods covered, the form in which the mark is actually used and the kind of image the opponent is trying to create for its brand. For example, if the evidence shows that the earlier registration for

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which reputation is claimed covers a device, but in reality this device is used combined with a verbal element, it would not be consistent to accept that the device by itself has a reputation.

Case No Comment

R 1308/2010-4 ‘WM GRAND PRIX’

In all the examples of actual use on the podia, media kits, posters, race cards, letter head, programme covers, tickets, passes etc., submitted by the opponent, the words GRAND PRIX are always used in combination with other elements. No evidence of use was submitted of the use of the trade mark GRAND PRIX in an independent way (paras 53, 54).

T-10/09, ‘F1-LIVE’ (C-196/11 P)

The evidence of reputation makes reference to the earlier figurative mark ‘F1 Formula 1’ and not to the earlier word marks. Without its particular logotype the text ‘Formula 1’ and its abbreviation ‘F1’ are perceived as descriptive elements for a category of racing cars or races involving those cars. The reputation was not proven for the word marks which are not identical or similar (paras 53, 54, 67). The Court did not address this point.

3.2 The similarity of the signs

A ‘certain degree of similarity between the signs’ must be found for an opposition under Article 8(5) CTMR to succeed (judgment of 24/03/2011, C-552/09 P, ‘TiMi KINDERJOGHURT’, para. 53). If the signs are found dissimilar overall, the examination aimed at establishing whether the other requirements under Article 8(5) CTMR are met should not be carried out, as the opposition cannot succeed.

A subject of some uncertainty is the relationship between ‘similarity’ within the meaning of Article 8(5) CTMR and the meaning of the same term used in Article 8(1)(b) CTMR. According to the clear wording of these two provisions, a similarity (or identity) between the signs is a precondition for the application of both Article 8(1)(b) and Article 8(5) CTMR. The use of the same term in both provisions is an ar gument in favour of the need to interpret this term in the same way and the case-law has confirmed this.

Accordingly, the assessment of similarity should be made according to the same criteria that apply in the context of Article 8(1)(b) CTMR, thus taking into account elements of visual, aural or conceptual similarity (judgment of 23/10/2003, C-408/01, ‘Adidas’, para. 28, relating to the interpretation of Article 5(2) TMD, and judgment of 24/03/2011, C-552/09P, ‘TiMi KINDERJOGHURT’, para. 52). See the Guidelines, Part C, Opposition, Section 2, Identity and Li kelihood of Confusion, Chapter 3, Comparison of Signs.

The general rules for assessing the signs established for the examination of this criterion under Article 8(1)(b) CTMR apply, such as the rule that consumers perceive the sign as a whole and only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect image of them that they have kept in mind (judgment of 25/01/2012, T-332/10 ‘Viaguara’, paras 33, 34) (see the Guidelines, Part C, Opposition, Section 2, Identity and Li kelihood of Confusion, Chapter 8, Global Assessment, paragraph 4, Imperfect recollection).

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3.2.1 Notion of ‘similarity’ pursuant to Article 8(5) CTMR compared with Article 8(1)(b) CTMR

Despite application of the same criteria for similarity of the signs in Article 8(1)(b) and Article 8(5) CTMR, the purposes underlying these Articles are different: for Article 8(1)(b) CTMR, the aim is to prevent the registration of a later trade mark that, if used, could confuse the relevant public as regards the commercial origin of the goods or services concerned, whereas for Article 8(5) CTMR, the aim is to prevent the registration of a l ater trade mark that, if used, could take unfair advantage of, or be detrimental to, the reputation or distinctiveness of the earlier reputed trade mark.

The relationship between the notion of ‘similarity’ under the two provisions was addressed by the Court in TiMi KINDERJOGHURT: ‘It should be noted at the outset that … the existence of a similarity between the earlier mark and the challenged mark is a pr econdition for the application both of Article 8(1)(b) [CTMR] and of Article 8(5) [CTMR]’ (para. 51).

In the context both of Article 8(1)(b) and o f Article 8(5) CTMR, a finding of similarity between the marks in question requires the existence, in particular, of elements of visual, aural or conceptual similarity (judgment of 23/10/2003, C-408/01 ‘Adidas- Salomon and Adidas Benelux’, para. 28).

However, those provisions differ in terms of the degree of similarity required. Whereas the protection provided for under Article 8(1)(b) CTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) CTMR. Accordingly, the types of injury referred to in Article 8(5) CTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks that is to say, to establish a l ink between them (judgment of 23/10/2003, C-408/01 ‘Adidas- Salomon and A didas Benelux’, paras 27, 29, 31, and judgment of 27/11/2008, C-252/07 ‘Intel Corporation’, paras 57, 58, 66).

Nevertheless, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, depending on whether the assessment is carried out under Article 8(1)(b) CTMR or under Article 8(5) CTMR.

To sum up, the application of both Article 8(1)(b) and Article 8(5) CTMR requires a finding of similarity between the signs. Consequently, if in the examination of Article 8(1)(b) CTMR the signs were found to be dissimilar, the opposition will necessarily fail under Article 8(5) CTMR too.

However, once the signs have been found to be similar, depending on whether Article 8(1)(b) or Article 8(5) CTMR are involved, the examiner will independently assess whether the degree of similarity is sufficient for the relevant provision to apply (and in correlation with the further relevant factors).

Therefore, a degree of similarity between the marks that, after an overall assessment of the factors, led to a partial finding of likelihood of confusion under Article 8(1)(b) CTMR does not necessarily trigger a link between the signs under Article 8(5) CTMR, for example because the markets concerned are completely distinct. A full analysis

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must take place. This is because the similarity of the signs is only one of the factors to be consi dered when assessing whether there is such a l ink (see the relevant criteria listed under paragraph 3.3 below on the ‘link’).

Depending on the case, the following scenarios are possible.

• Article 8(1)(b) CTMR fails because the signs are dissimilar – Article 8(5) CTMR fails too, since the same conclusion applies.

• Likelihood of confusion pursuant to Article 8(1)(b) CTMR is excluded (e.g. because the goods or services are dissimilar or very remotely similar), but the signs are similar – the examination of Article 8(5) CTMR must be carried out (see T-143/11 ‘CHIANTI CLASSICO’ paras 66-71).

• The similarity of the signs together with the other relevant factors justifies the exclusion of likelihood of confusion pursuant to Article 8(1)(b) CTMR, but the similarity between the signs might be sufficient to establish a link between them under Article 8(5) CTMR, in view of the other relevant factors to be t aken into account.

3.3 The link between the signs

The Court has made it clear that in order to assess whether the use of the contested mark would be likely to cause detriment to, or take unfair advantage of, the distinctive character or repute of the earlier mark, it is necessary to establish – once the signs have been f ound to be similar – if, given all the relevant factors, a l ink (or association) between the signs will be est ablished in the mind of the relevant public. The subsequent case-law has made it clear that such an analysis should precede the final assessment of the existence of a risk of injury.

The notion of a link between the signs was addressed by the Court in its judgment of 27/11/2008, C-252/07 ‘Intel Corporation’, para. 30 (and the case-law cited therein), which, although referring to the interpretation of Article 4(4)(a) TMD, is applicable to Article 8(5) CTMR which is the equivalent provision in the CTMR. In Intel, the Court, stated the following (para. 30):

The types of injury referred to in Article 4(4)(a) of the Directive, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see, in relation to Article 5(2) of the Directive, General Motors, para. 23; Adidas-Salomon and Adidas Benelux, para. 29, and adidas and adidas Benelux, para. 41).

The term ‘link’ is often also referred to as ‘association’ in other paragraphs of this part of the Guidelines as well as in case-law. These terms are, at times, used interchangeably.

The Court made it clear that the mere fact that the marks in question are similar is not sufficient for it to be concluded that there is a link between them. Rather, whether or not there is a link between the marks at issue must be appr eciated globally, taking into account all factors relevant to the circumstances of the case.

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According to Intel, (para. 42), the following may be relevant factors when assessing whether such a link exists.

• The degree of similarity between the conflicting marks. The more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 26 and, by analogy, preliminary ruling of 27/11/2008, C-252/07, Intel, para. 44).

• The nature of the goods or services for which the earlier mark is reputed and the later mark seeks registration, including the degree of similarity or dissimilarity between those goods or services, and the relevant section of the public. The goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (Intel, para. 49).

• The strength of the earlier mark’s reputation.

• The degree of the earlier mark’s distinctive character, whether inherent or acquired through use. The more inherently distinctive the prior mark, the more likely it will be brought to a consumer’s mind when encountering a similar (or identical) later mark.

• The existence of likelihood of confusion on the part of the public.

This list is not exhaustive. A link between the marks at issue may be established or excluded on the basis of only some of those criteria.

The question of whether the relevant public will establish a link between the marks at issue is a question of fact which must be answered in the light of the facts and circumstances of each individual case.

The assessment of whether a ‘link’ will be es tablished must take into account all the relevant factors that will then need to be balanced. Therefore, even a faint or remote degree of similarity between the signs (which might not be s ufficient for a f inding of likelihood of confusion under Article 8(1)(b) CTMR) still justifies assessing all the relevant factors to determine if it is likely that a l ink between the signs will be established in the mind of the relevant public. In this respect, in its judgment of 24/03/2011, C-552/09 P, ‘TiMi Kinderjoghurt’, paras 65, 66, the Court stated the following:

Although that global assessment implies some interdependence between the relevant factors, and a low degree of similarity between the marks may therefore be offset by the strong distinctive character of the earlier mark … the fact remains that where there is no similarity between the earlier mark and the challenged mark, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services respectively covered are identical or similar are not sufficient for it to be found that the relevant public makes a link between them ...

… It is only if there is some similarity, even faint, between the marks at issue that the General Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between

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them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public.

Case-law has made it clear that a link is not sufficient, in itself, to establish that there may be one o f the forms of damage referred to in Article 8(5) CTMR (judgment of 26/09/ 2012, T-301/09, ‘Citigate’, para. 96, and the case-law cited therein). However, as will be ex plained in detail under paragraph 3.4 ‘The risk of injury’ below, the existence of the link (or association) between the signs is necessary before determining whether detriment or unfair advantage are likely.

3.3.1 Examples where a link was found between the signs

The following are examples where it was found that the degree of similarity between the signs (together with further factors) was sufficient to conclude that consumers would establish a link between them.

Earlier reputed sign CTM application Case No

BOTOX BOTOLYST and BOTOCYL Joined Cases

T-345/08 and T-357/08 confirmed in C-100/11P)

The trade mark BOTOX had a reputation for pharmaceutical preparations for the treatment of wrinkles in the United Kingdom on the filing date of the contested marks, which cover a range of goods in Class 3. The General Court confirmed the Board’s finding that there is a certain overlap between the goods, namely a low degree of similarity between the opponent’s pharmaceutical preparations for the treatment of wrinkles and the contested cosmetics among other creams, whereas the remaining contested goods, namely perfumes, sun-tanning milks, shampoos, bath salts, etc., are dissimilar. Nevertheless, the goods at issue concern related market sectors. The General Court confirmed the Board’s finding that the relevant public – practitioners as well as the general public – would not fail to notice that both the applied for trade marks, BOTOLIST and B OTOCYL, begin with ‘BOTO-’, which comprises almost the whole of the mark BOTOX, which is well known to the public. The General Court pointed out that ‘BOTO- is not a common prefix, either in the pharmaceutical field or in the cosmetic field and that it has no descriptive meaning. Even if the sign BOTOX could be broken down into ‘bo’ for ‘botulinum’ and ‘tox’ for ‘toxin’ in reference to the active ingredient which it uses, that word would then have to be considered to have acquired a distinctive character, inherent or through use, at least in the United Kingdom. In light of all the relevant factors, the public would naturally be led to establish a l ink between the marks BOTOLIST and BOTOCYL and the reputed mark BOTOX (paras 65-79).

Earlier reputed sign CTM application Case No

RED BULL R 0070/2009-1

The Board found that a link would be established between RED DOG and RED BULL because (i) the marks have some relevant common features, (ii) the conflicting goods in Classes 32-33 are identical, (3) the RED BULL mark is reputed, (iv) the RED BULL mark has acquired a strong distinctive character through use and (v) there might be a possibility of confusion (para 19). It is reasonable to assume that the average consumer of beverages, who knows the reputed RED BULL mark and sees the RED DOG marks on the same kind of beverages would immediately recall the earlier mark. According to the Intel judgement, this is ‘tantamount to the existence of a link’ between the marks (para 24).

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Earlier reputed sign CTM application Case No

VIAGRA VIAGUARA T-332/10

The trade marks are highly similar overall (para. 42). Visually, all the letters of the earlier trade mark are present in the contested one, the first four and the final two are in the same sequence. There is a visual similarity, especially since the public tends to pay more attention to the beginnings of words (para 35, 36). The identity of the first and the last syllable, together with the fact that the middle syllables have in common the sound [g], leads to a high degree of phonetic similarity (paras 38, 39). Neither of the signs has a meaning and, therefore, the public will not differentiate them conceptually (para. 40).

The earlier mark covers pharmaceuticals for the treatment of erectile dysfunctions in Class 5, whereas the contested mark covers non-alcoholic and alcoholic drinks in Classes 32 and 33. The reputation of the earlier sign for the mentioned goods is not disputed. The General Court found that although no direct connection can be established between the goods covered by the marks in dispute since they are dissimilar, an association with the earlier mark remains possible, taking into account the high degree of similarity between the signs and the strong reputation acquired by the earlier mark. Therefore, the General Court concludes that a link is likely to be established between the marks (para. 52).

Earlier reputed sign CTM application Case No

RSC-ROYAL SHAKESPEARE COMPANY ROYAL SHAKESPEARE T-60/10

As the contested trade mark is exclusively made up of the central and distinctive element of the earlier trade mark, namely the expression ‘royal shakespeare’, the signs at issue are visually, phonetically and conceptually similar. Therefore, the average consumer will establish a link between those signs (para 29).The earlier mark covers services in Class 41, including theatre productions, whereas the contested mark covers non-alcoholic and alcoholic drinks in Classes 32 and 33 and providing of food and drink, restaurants, bars, pubs, hotels; temporary accommodation in Class 42. The General Court confirmed the Board’s finding of the ‘exceptional’ reputation of the earlier mark in the United Kingdom for theatre productions. The relevant public for the contested trade mark is the same as the relevant public for the earlier trade mark, namely the public at large (para 58). Although the contested goods in Classes 32-33 do not appear to be directly and immediately linked to the opponent’s theatre productions, there is a certain proximity and link between them. The General Court refers to the judgment of 04/11/2008, T-161/07 ‘Ugly (COYOTE UGLY)’, paras 31-37, where a c ertain similarity between entertainment services and beer was found due to their complementarity. The General Court added that it is common practice, in theatres, for bar and catering services to be offered either alongside and in the interval of a p erformance. Moreover, irrespective of the above, in view of the established reputation of the earlier trade mark, the relevant public, namely the public at large in the United Kingdom, would be able to make a link with the intervener when seeing a beer with the contested trade mark in a supermarket or in a bar (para. 60).

3.3.2 Examples where no link was found between the signs

The following are examples where an overall assessment of all of the relevant factors showed that it was unlikely that a link would be established between the signs.

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Earlier reputed sign CTM application Case No

R 0724/2009-4

The signs only have a certain degree of visual and aural similarity. The Board confirms that the reputation of the earlier marks has been proven solely for distribution of energy services. These services are completely different from the goods for which protection is requested in Classes 18, 20, 24 and 2 7. The relevant section of the public is the same, given that the services for which a reputation has been proven, namely distribution of energy services, are aimed at the general public and the goods in dispute are also aimed at the average consumer who is reasonably observant and c ircumspect. However, even if the relevant section of the public for the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. The huge differences in usage between the goods in dispute and the services for which a r eputation has been proven make it very unlikely that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) CTMR and f or unfair advantage to be taken of the distinctive character or repute of the earlier mark. It is even less likely that, when intending to purchase a bag or item of furniture, the relevant public will link these goods to a trade mark that is very well known, but for services in the energy sector (paras 69-79).

Earlier reputed sign CTM application Case No

G-STAR and

T-309/08

Visually the signs cause a different overall impression, due to the figurative element of a Chinese dragon’s head placed at the beginning of the mark applied for. Aurally, there is a rather close aural similarity between the marks at issue. The signs are conceptually different, since the element ‘star’ of the earlier marks is a w ord which is part of basic English vocabulary, the meaning of which is widely understood throughout the Community. Therefore, the earlier marks will be perceived as referring to a star or a famous person. It is possible that a part of the relevant public will attribute to the element ‘stor’ of the contested mark the sense of the Danish and Swedish word ‘stor’, meaning ‘big, large’, or will regard it as a reference to the English word ‘store’ meaning ‘shop, storage’. It is, however, more likely that the majority of the relevant public will not attribute any particular meaning to that element. Therefore, the relevant public will perceive the marks at issue as conceptually different inasmuch as the earlier marks have a clear meaning throughout the Community, while the mark applied for has either a different meaning for part of the relevant public or has no meaning. According to settled case-law, where the meaning of at least one of the two signs at issue is clear and specific so that it can be gr asped immediately by the relevant public, the conceptual differences between those signs may counteract the visual and aural similarities between them. The Board of Appeal was right to find that the visual and conceptual differences between the marks prevented any assumption of a possible link between them (paras 25-36).

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Earlier reputed sign CTM application Case No

ONLY R 1556/2009-2(confirmed by T-586/10)

The goods in Class 3 are identical and target the same public. There is a slight degree of visual and conceptual similarity between the signs at issue and a moderate degree of aural similarity. Even if the earlier marks had a reputation, the differences between the signs, in particular due to the conceptual unit created by the combination of the element ‘only’ and the distinctive dominant element ‘givenchy’, would be significant enough for the public not to make any connection between them. Therefore, the Board of Appeal was correct in finding that one of the conditions for applying Article 8(5) CTMR, namely that the signs be sufficiently similar to lead the relevant public to make a connection between them, has not been met (paras 65, 66).

Earlier reputed sign CTM application Case No

KARUNA R 696/2009-4(confirmed by T-357/10)

The goods concerned, chocolate in Class 30, are identical. The signs differ visually not only because of the figurative elements in the sign applied for, but also because of their verbal elements. Even though the verbal elements of the marks at issue have three letters out of six in common, a difference arises because the earlier marks begin with the letters ‘ka’ while the mark applied for begins with the letters ‘co’ and because the consumer normally attaches more importance to the first part of words. There is a low degree of phonetic similarity between the signs taken as a whole. Conceptually, the word ‘corona’, meaning ‘crown’ in Spanish, does not have any meaning in Estonian, Latvian or Lithuanian. Accordingly, no conceptual comparison is possible between the signs at issue in the three Baltic States. The mere fact that the Lithuanian word ‘karūna’ means ‘crown’ is not sufficient to establish that the relevant public associates the terms ‘karuna’ or ‘karūna’ with the word ‘corona’, which remains a foreign word. To conclude, the General Court reiterated that if the condition of similarity of the signs is not met under Article 8(1)(b) CTMR, it must also be held, on the basis of the same analysis, that that condition is not met under Article 8(5) CTMR either (paras 30-34 and 49).

3.4 The risk of injury2

3.4.1 Protected subject matter

Article 8(5) CTMR does not protect the reputation of the earlier mark as such, in the sense that it does not intend to prevent the registration of all marks identical with or similar to a mark with reputation. In addition, there must be a l ikelihood that use of the contested application without due c ause would take unfair advantage of, or would be detrimental to, the distinctive character or the repute of the earlier mark. The Court confirmed this by stating that ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be det rimentally affected without due cause’ (see judgment of 14/09/1999, C-375/97, ‘General Motors’, para. 30).

The Court did not set out in more detail exactly what would count as detriment or unfair advantage, even though it stated in Sabel that Article 8(5) CTMR ‘[does] not require

2 For the purposes of these Guidelines, the term ‘injury’ covers taking ‘unfair advantage’ even though in such cases there is not necessarily an ‘injury’ in the sense of detriment either to the distinctive character or repute of the mark or, more generally, to its proprietor.

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proof of likelihood of confusion’, thereby stating the obvious, namely that the enlarged protection granted to reputed marks is not concerned with their function of origin (see judgment of 11/11/1997, C-251/95, ‘Sabel’, para. 20).

However, in a series of previous decisions the Court stated that apart from indicating origin, a trade mark may also fulfil other functions worthy of protection. More particularly, it confirmed that a trade mark can offer a guarantee that all the goods coming from a single undertaking have the same quality (guarantee function) and that it can serve as an advertising instrument by reflecting back the goodwill and prestige it has acquired in the market (advertising function) (judgment of 17/10/1990, C-10/89 CNL-SUCAL v HAG, judgment of 11/07/1993, joined cases C-427/93, C-429/93 and C-436/93, ‘Bristol-Myers Squibb and Others v Paranova’, judgment of 11/11/1997, C-349/95, ‘Loendersloot v Ballantine & Son and Others’, judgment of 04/11/1997, C-337/95, ‘Parfums Christian Dior v Evora’, and j udgment of 23/02/199, C-63/97, ‘BMW’).

It follows that trade marks do not only serve to indicate the origin of a product, but also to convey a certain message or image to the consumer, which is incorporated in the sign mostly through use and, once acquired, forms part of its distinctiveness and repute. In most cases of reputation these features of the trade mark will be particularly developed, as the commercial success of a brand is usually based on product quality, successful promotion, or both and, for this reason, they will be especially valuable to the trade mark owner. This added value of a mark with reputation is precisely what Article 8(5) CTMR intends to protect against undue detriment or unfair advantage.

Hence, the protection under Article 8(5) CTMR extends to all cases where the use of the contested trade mark applied for is likely to have an adverse effect on the earlier mark, in the sense that it would diminish its attractiveness (detriment to distinctiveness) or devalue the image it has acquired among the public (detriment to repute), or the use of the contested mark is likely to result in misappropriation of its powers of attraction or exploitation of its image and prestige (unfair advantage of the distinctive character or repute).

Given also that a very strong reputation is both easier to harm and more tempting to take advantage of, owing to its great value, the Court underlined that ‘the stronger the earlier mark’s distinctive character and r eputation, the easier it will be t o accept that detriment has been caused to it’ (judgment of 27/11/2008, C-252/07 ‘Intel’, paras 67, 74, judgment of 25/05/2005, T-67/04, ‘Spa-finders’, para. 41). Even though the Court did not say so expressly, the same must be accepted as regards the unfair advantage that the applicant might enjoy at the expense of the earlier mark.

3.4.2 Assessment of the risk of injury

In General Motors the Court did not deal with the assessment of detriment and unfair advantage in great detail, as this issue was not part of the question referred to it. It only stated that it ‘is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an association between the two trade marks … and that the earlier trade mark may consequently be damaged’ (judgment of 14/09/1999, C-375/97, ‘General Motors’, para. 23).

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Even though this statement is too limited to serve as a basis for a comprehensive analysis of the existence of a risk of injury, it gives at least a significant indication, namely that detriment or unfair advantage must be the consequence of an association between the conflicting marks in the minds of the public, made possible by the similarities between the marks, their distinctiveness, the reputation and ot her factors (see paragraph 3.3 above).

The need for an association capable of causing detriment has a two-fold consequence for the assessment of detriment or unfair advantage.

• Firstly, if the alleged detriment or unfair advantage is not the result of an association between the marks, but is due to other, extraneous reasons, it is not actionable under Article 8(5) CTMR.

• Secondly, if in view of the overall circumstances of the case, an association between the marks is not likely, the necessary link between the use of the later mark and t he detrimental effect will be m issing. Therefore, the similarities between the signs and the reputation of the earlier mark must be of such a nature and degree that, considering all factors, the consumer will associate the signs, in the sense that encountering one of them will bring to mind the other.

Furthermore, as the Court observed, an association between the marks requires that the part of the public which is already familiar with the earlier mark is also exposed to the later mark. This will be easier to establish where the earlier mark is known to the public at large, or where the consumers of the respective goods and services largely overlap. However, in cases where the goods and services are significantly different from each other and such a connection between the respective publics is not obvious, the opponent must justify why the marks will be associated, by reference to some other link between its activities and those of the applicant, for example where the earlier mark is exploited outside its natural market sector, for instance, by licensing or merchandising (see paragraph 3.3 above).

Earlier reputed sign CTM application Case No

TWITTER

R 1074/2011-5

Repute for services in Classes 38, 42 and 45, inter alia, a website for social networking

Classes 14, 18 and 25

The Board defined the relevant public as the average European consumer of the goods applied for, which are ordinary goods meant for the general public.

The Board found it likely that the applicant’s goods could be seen as merchandising products coming from the opponent. Items such as t-shirts, key chains, watches, hand bags, jewellery, caps etc. are very frequently used as marketing means bearing trade marks which relate to entirely distinct goods and services. Upon encountering the sign TWITTER used on a w atch, a scarf or a t -shirt, the relevant consumer would inevitably make a mental connection with the opponent’s sign and the services it offers on account of the reputation of the opponent’s mark. This would give the applicant a competitive advantage since its goods would benefit from the extra attractiveness they would gain from the association with the opponent’s older mark. Buying a TWITTER watch as a present for someone who is known to be a TWITTER user is, for example, an action motivated by the fondness for the earlier mark (para. 40).

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The more immediately and s trongly the earlier mark is brought to mind by the later sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (judgments of 27/11/2008, C-252/07 ‘Intel’, paras 67-69; judgment of 18/06/2009, C-487/07 ‘L’Oréal’, paras 41, 43).

Therefore, the evaluation of detriment or unfair advantage must be based on an overall assessment of all the factors relevant to the case (including in particular the similarity of signs, the reputation of the earlier mark, the respective consumer groups and market sectors), with a view to determining whether the marks may be associated in a way which may adversely affect the earlier trade mark.

3.4.3 Types of injury

Article 8(5) CTMR refers to the following types of injury: ‘take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’. Therefore, Article 8(5) CMTR applies if any of the following three alternative requirements is fulfilled, namely if use of the contested mark would:

• take unfair advantage of the distinctiveness, or the repute of the earlier mark; • cause detriment to the distinctiveness; • cause detriment to the repute.

As regards the first type of injury, the wording of Article 8(5) CTMR suggests the existence of two kinds of unfair advantage, but settled case-law treats both as a single injury under Article 8(5) CTMR (see, for example, judgment of 06/07/2012, T-60/10, ‘RSC-Royal Shakespeare Company’, para. 47). For the sake of completeness, both aspects of the same injury will be dealt with under paragraph 3.4.3.1 below.

As demonstrated in the Guidelines, Part C, Opposition, Section 2, Identity and Likelihood of Confusion, likelihood of confusion relates only to confusion about the commercial origin of goods and s ervices. Article 8(5) CTMR, in contrast, protects earlier reputed marks in cases of association or confusion that does not necessarily relate to the commercial origin of goods/services. Article 8(5) CTMR protects the heightened effort and financial investment that is involved in creating and promoting trade marks to the extent that they become reputed by protecting these marks against later similar marks taking unfair advantage of, or being detrimental to, the distinctive character or the repute of the earlier trade mark. There is a rich lexicon of vocabulary that is used in relation to this area of trade mark law. The most common terms are set out below.

Terms in Article 8(5) CTMR Commonly used equivalents

Unfair advantage Free-riding, riding on the coat-tails

Detriment to distinctiveness Dilution by blurring, dilution, blurring, watering down, debilitating,whittling away

Detriment to repute Dilution by tarnishing, tarnishment, degradation

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3.4.3.1 Taking unfair advantage of distinctiveness or repute

The nature of the injury

The notion of taking unfair advantage of distinctiveness or repute covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on its goods/services a sign which is similar (or identical) to one widely known in the market and, thus, misappropriating its attractive powers and advertising value or exploiting its reputation, image and prestige. This may lead to unacceptable situations of commercial parasitism where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up goodwill for its mark, as it may stimulate the sales of the applicant’s products to an ex tent which is disproportionately high in comparison with the size of its promotional investment.

In its judgment of 18/06/2009, C-487/09, ‘L’Oréal and others’, the Court indicated that unfair advantage exists where there is a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign. By riding on the coat-tails of the reputed mark, the applicant benefits from its power of attraction, its reputation and its prestige. It also exploits, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the image of that mark (paras 41, 49).

Earlier reputed sign CTM application Case No

SPA

LES THERMES DE SPA SPA-FINDERS T-67/04

The concept of taking unfair advantage of the distinctive character or the repute of the earlier mark must be intended to encompass instances where there is clear exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation (see to that effect Opinion of Advocate General Jacobs in Adidas, point 39) (para. 51).

Earlier reputed sign CTM application Case No

RSC-ROYAL SHAKESPEARE COMPANY

ROYAL SHAKESPEARE T-60/10

The unfair advantage taken of the distinctive character or the repute of the earlier trade mark consists in the fact that the image of the mark with a r eputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods can be made easier by that association with the earlier mark with a reputation (para. 48).

Relevant consumer

The concept of ‘unfair advantage’ focuses on benefit to the later mark rather than harm to the earlier mark; what is prohibited is the exploitation of the earlier mark by the proprietor of the later mark. Accordingly, the existence of the injury consisting of unfair advantage obtained from the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods or services for which the later mark is applied for (judgment of 27/11/2008, C-252/07, ‘Intel’,

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paras 35, 36; judgment of 12/03/2009, C-320/07P, ‘nasdaq’, paras 46-48; judgment of 07/12/2010, T-59/08, ‘NIMEI LA PERLA MODERN CLASSIC’, para. 35).

The assessment of unfair advantage

In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment which takes into account all the factors relevant to the circumstances of the case (judgment of 10/05/2007, T-47/06, ‘nasdaq’, para. 53, confirmed, on appeal, by judgment of 12/03/2009, C-320/07P, ‘nasdaq’; see also judgment of 23/10/2003, C-408/01 ‘Adidas’, paras 29, 30, 38; judgment of 27/11/2008, C-252/07 ‘Intel’, paras 57, 58, 66; and judgment of 24/03/2011, C-552/09P, ‘Kinder’, para. 53).

The misappropriation of the distinctiveness and repute of the earlier mark presupposes an association between the respective marks, which makes possible the transfer of attractiveness and prestige to the sign applied for. An association of this kind will be more likely in the following circumstances.

1. Where the earlier mark possesses a strong reputation or a very strong (inherent) distinctive character, because in such a c ase it will be bot h more tempting for the applicant to try to benefit from its value and easier to associate it with the sign applied for. Such marks will be recognised in almost any context, exactly because of their outstanding distinctiveness or ‘good’ or ‘special’ reputation, in the sense that it reflects an image of excellence, reliability or quality, or some other positive message, which could positively influence the choice of the consumer as regards goods of other producers (judgment of 12/07/2011, C-324/09, ‘L’Oréal and others’, para. 44). The stronger the distinctive character of the earlier mark, the more likely it is that, when encountering a later identical or similar mark, the relevant public will associate it with that earlier mark (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 27).

2. Where the degree of similarity between the signs at issue is high. The more similar the marks are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (judgment of 06/07/2012, T-60/10, ‘ROYAL SHAKESPEARE’, para. 26; see, by analogy, judgment of 27/11/2008, C-252/07, ‘Intel’, para. 44).

3. Where there is a special connection between the goods/services which allows for some of the qualities of the opponent’s goods/services to be a ttributed to those of the applicant. This will be par ticularly so in the case of neighbouring markets, where a ‘brand extension’ would seem more natural, as in the example of pharmaceuticals and cosmetics; the healing properties of the former may be presumed in the latter when it bears the same mark. Similarly, the Court has held that certain drinks (Classes 32 and 33) commercialised as improving sexual performance were linked to the properties of the goods in Class 5 (pharmaceutical and veterinary products and substances) for which the earlier mark, Viagra, was registered (judgment of 25/01/2012, T-332/10 ‘VIAGUARA’, para. 74). Conversely, such a l ink was not found between credit card services and cosmetics, as it was thought that the image of the former is not transferable to the latter, even though their respective users largely coincide.

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4. Where, in view of its special attractiveness and prestige, the earlier mark may be exploited even outside its natural market sector, for example, by licensing or merchandising. In this case, if the applicant uses a sign identical or similar to the earlier mark, for goods for which the latter is already exploited, it will obviously profit from its de facto value in that sector (see decision of 16/03/2012, R 1074/2011-5, ‘Twitter’).

The applicant’s intention is not a material factor. Taking unfair advantage of the distinctiveness or the repute of a trade mark may be a deliberate decision, for example where there is a clear exploitation and free riding on the coat-tails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a del iberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a r eputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a r eputation’ (judgment of 19/06/2008, T-93/06, ‘Mineral Spa’, para. 40, judgment of 22/03/2007, T-215/03, ‘VIPS’, para. 40, judgment 30/01/2008, T-128/06, ‘Camelo’, para. 46).

Therefore, bad faith is not in itself a condition for the application of Article 8(5) CTMR, which only requires that the advantage be ‘unfair’, in that there is no justification for the applicant’s profit. However, where the evidence shows that the applicant is clearly acting in bad faith, there will be a strong indication of unfair advantage. The existence of bad faith may be inferred from various factors, such as an obvious attempt by the applicant to imitate an earlier sign of great distinctiveness as closely as possible, or where there is no apparent reason why it chose for its goods a mark which includes such a sign.

Finally, the concept of unfair advantage in Article 8(5) CTMR does not relate to the detriment caused to the reputed mark. Accordingly, an adv antage taken by a third party of the distinctive character or the repute of the mark may be unfair, even if the use of the identical or similar sign is not detrimental to the distinctive character or to the repute of the mark or, more generally, to its proprietor. It is, therefore, not necessary for the opponent to show that the applicant’s benefit is detrimental to its economic interests or to the image of its mark (unlike with tarnishing, see below), as in most cases the ‘borrowed’ distinctiveness/prestige of the sign will principally affect the applicant’s competitors, that is, traders dealing in identical/similar/neighbouring markets, by putting them at a competitive disadvantage. However, the possibility of simultaneous detriment to the opponent’s interests should not be ruled out completely, especially in instances where use of the applied-for sign could affect the opponent’s merchandising schemes, or would hinder its plans to penetrate a new market sector.

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Cases on unfair advantage

Risk of unfair advantage established

Earlier reputed sign CTM application Case No

INTEL INTELMARK C-252/07(Advocate General Opinion)

In her opinion in the Intel preliminary ruling, Advocate General Sharpston referred to unfair advantage as follows: ‘The concepts of taking unfair advantage of the distinctive character or repute of the mark in contrast must be intended to encompass “instances where there is clear exploitation and free-riding on the coat-tails of a famous mark or an attempt to trade upon its reputation”. Thus by way of example Rolls Royce would be entitled to prevent a manufacturer of whisky from exploiting the reputation of the Rolls Royce mark in order to promote his brand. It is not obvious that there is any real difference between taking advantage of a m ark’s distinctive character and t aking advantage of its repute; since however nothing turns on any such difference in the present case, I shall refer to both as free-riding’ (para. 33).

Earlier reputed sign CTM application Case No

CITIBANK et al T-181/05

‘…the reputation of the trade mark CITIBANK in the European Community in regard to banking services is not disputed. That reputation is associated with features of the banking sector, namely, solvency, probity and financial support to private and commercial clients in their professional and investment activities.

‘…there is a c lear relationship … between the services of customs agencies and the financial services offered by banks such as the applicants, in that clients who are involved in international trade and in the import and export of goods also use the financial and banking services which such transactions require. It follows that there is a probability that such clients will be familiar with the applicants’ bank given its extensive reputation at international level.

‘In those circumstances, the Court holds that there is a high probability that the use of the trade mark applied for, CITI, by customs agencies, and therefore for financial agency activities in the management of money and real estate for clients, may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK and the considerable investments undertaken by the applicants to achieve that reputation. That use of the trade mark applied for, CITI, could also lead to the perception that the intervener is associated with or belongs to the applicants and, therefore, could facilitate the marketing of services covered by the trade mark applied for. That risk is further increased because the applicants are the holders of several trade marks containing the component “citi”’ (paras 81-83).

Earlier reputed sign CTM application Case No

SPA MINERAL SPA T-93/06

MINERAL SPA (f or soaps, perfumeries, essential oils, preparations for body and beauty care, preparations for the hair, dentifrices in Class 3) could take unfair advantage of the image of the earlier trade mark SPA and the message conveyed by it in that the goods covered by the contested application would be perceived by the relevant public as supplying health, beauty and purity. It is not a question of whether toothpaste and perfume contain mineral water, but whether the public may think that the goods concerned are produced from or with mineral water (paras 43, 44).

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Earlier reputed sign Case No

L’Oréal et al C-324/09 (preliminary ruling)

According to L’Oréal et al, the defendants manufactured and imported perfume which was ‘smell-like’ of L’Oréal’s fragrances but sold at a considerably lower price, using packaging which ‘took a wink’ at the get- up covered by L’Oréal’s marks. The comparison lists used by the defendants present the perfumes which they market as being an imitation or a replica of goods bearing a trade mark with repute. Under Directive 84/450, comparative advertising which presents the advertiser’s products as an imitation of a product bearing a trade mark is inconsistent with fair competition and thus unlawful. Therefore, any advantage gained by the advertiser through such advertising will have been achieved as a result of unfair competition and must be regarded as taking unfair advantage of the reputation of that mark (para. 79).

Earlier reputed sign CTM application Case No

NASDAQ T-47/06

‘Taking account of the fact that the financial and stock market listing services supplied by the intervener under its trade mark NASDAQ and, therefore, the trade mark NASDAQ itself, undeniably presents a certain image of modernity and that image can be transferred to sports equipment and, in particular, to the high tech composite materials which would be marketed by the applicant under the mark applied for, which the applicant appears to recognise implicitly by stating that the word ‘nasdaq’ is descriptive of its main activities.

Therefore, in light of that evidence, and taking account of the similarity of the marks at issue, the importance of the reputation and the highly distinctive character of the trade mark NASDAQ, it must be held that the intervener has established prima facie the existence of a future risk, which is not hypothetical, of unfair advantage being drawn by the applicant, by the use of the mark applied for, from the reputation of the trade mark NASDAQ. There is therefore no need to set aside the contested decision on that point’ (paras 60, 61).

Earlier reputed sign CTM application Case No

RSC-ROYAL SHAKESPEARE COMPANY

ROYAL SHAKESPEARE T-60/10

There is a certain proximity and link between entertainment services and beer, even a certain similarity due to their complementarity. The public in the United Kingdom would be able to make a link with the Royal Shakespeare Company (RSC) when seeing a beer with the contested mark ROYAL SHAKESPEARE in a supermarket or in a bar. The contested mark would benefit from the power of attraction, the reputation and the prestige of the earlier mark for its own goods and services, which would attract the consumers’ attention thanks to the association with RSC, thereby gaining a commercial advantage over its competitors’ goods. The economic advantage would consist of exploiting the effort expended by RSC to establish the reputation and the image of its earlier mark without paying any compensation in exchange. That equates to an unfair advantage (para. 61).

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Earlier reputed sign CTM application Case No

VIAGRA VIAGURA T-332/10

While recognising that the primary function of a t rade mark was as an indicator of origin, the General Court held that a mark could also serve to transmit other messages, concerning particular qualities or characteristics of the designated goods or services, or the images and sensations projected by the mark itself, such as luxury, lifestyle, exclusivity, adventure or youth. In this sense, a trade mark possessed an intrinsic economic value that was autonomous and distinct to that of the goods or services for which it was registered (para. 57).

The risk of taking unfair advantage encompasses cases of manifest exploitation or parasitism of a mark with reputation, namely the risk of transferring the image of the mark with reputation or the characteristics projected by it to the goods covered by the mark applied for, thus facilitating the marketing of those goods through association with the earlier mark with reputation (para. 59).

The Court concluded that, even if the drinks claimed by the mark applied for would not in reality produce the same benefit as the ‘immensely well-known’ pharmaceutical for the treatment of erectile dysfunction, what was important was that the consumer, because of the transfer of positive associations projected by the image of the earlier mark, would be inclined to purchase such drinks in the expectation of finding similar qualities, such as an increase in libido (paras 52 and 67).

Earlier reputed sign CTM application Case No

EMILIO PUCCI T-373/09 (appeal pending C-582/12 P)

(cases R 770/2008-2 and R 826/2008-2)

Although the applicant’s cosmetic products are dissimilar to the opponent’s clothes, they both fall squarely within the realm of products which are often sold as luxury items under famous marks of well-known designers and manufacturers. Taking into account that the earlier mark is very well known and that the commercial contexts in which the goods are promoted are relatively close, BoA concluded that consumers of luxury clothes will make a connection between the applicant’s mark for soaps, perfumery, essential oils, cosmetics and hair lotions in Class 3 and the famous mark ‘EMILIO PUCCI’, an association which will produce a commercial benefit as per the Board’s findings (BoA para. 129).

BoA concluded that there was a s trong likelihood that the applicant could exploit the reputation of the opponent’s mark for its own benefit. The use of the mark applied for in connection with the goods and services mentioned above will almost certainly draw the relevant consumer’s attention to the opponent’s highly similar and very well-known mark. The applicant will become associated with the aura of luxury that surrounds the ‘EMILIO PUCCI’ brand. Many consumers are likely to think that there is a direct connection between the goods of the applicant on the one hand, and the famous Italian fashion house on the other, perhaps in the form of a licensing agreement. The applicant could take unfair advantage of the fact that the public knows the trade mark ‘EMILIO PUCCI’ well in order to introduce its own highly similar trade mark without incurring any great risk and the costs of introducing a totally unknown trade mark onto the market (BoA para. 130).

The General Court confirmed the BoA findings.

Trade Marks with Reputation, Article 8(5) CTMR

Guidelines for Examination in the Office, Part C, Opposition Page 56

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Risk of unfair advantage denied

Earlier reputed sign CTM application Case No

O2

R 2304/2010-2

The Board of Appeal found that (1) the marks have very limited similarities and are dissimilar overall; (2) the use of the common designation ‘O2’ is descriptive in the mark applied for; and (3) taking the completely different areas of use – and the descriptive use of the common element – there can be no possibility of the applicant benefiting from the distinctive character of the earlier mark, even if there may be an overlap in the relevant public (para. 55).

Earlier reputed sign CTM application Case No

VIPS VIPS T-215/03

The earlier mark VIPS has a reputation for restaurants, in particular fast food chains. However, it was not proven that it also enjoys any particular prestige. The term VIPS is laudatory in itself and extensively used in this manner. Therefore, it cannot be ‘diluted’. There is no explanation as to how the sales of software products under the mark VIPS could possibly benefit from their association with a fast-food chain, even if a link were made.

Earlier reputed sign CTM application Case No

SPA SPA-FINDERS T-67/04

SPA has a r eputation for mineral water in the Benelux. The contested mark, SPA FINDERS, covers publications, catalogues, magazines, newsletters, travel agency services. The General Court declared that there was no detrimental link between the signs. The sign SPA is also used to denote the town of SPA and the racing circuit of the same name. There is no evidence of unfair advantage or any kind of exploitation of the fame of the earlier mark. The word SPA in the mark applied for only denotes the kind of publication concerned.

3.4.3.2 Detriment to distinctiveness

The nature of the injury

Detriment to the distinctive character of an ea rlier reputed mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods/services for which it is registered and u sed as coming from its proprietor is weakened because use of a later similar mark leads to dispersion of the identity of the earlier reputed mark by making it less distinctive or unique (judgment of 27/11/2008, C-252/07, ‘Intel’, para. 29).

Article 8(5) CTMR states that a p roprietor of a reputed mark may oppose CTM applications which, without due cause, ‘would be detrimental to the distinctive character of earlier reputed marks’ (emphasis added). Clearly, therefore, the object of protection is the distinctiveness of the earlier reputed mark. As demonstrated in the Guidelines, Part C, Opposition, Section 2, Identity and Likelihood of Confusion, Chapter 4, Distinctiveness, ‘distinctiveness’ refers to the greater or lesser capacity of a m ark to identify the goods/services for which it has been registered as coming from a particular undertaking. Therefore, Article 8(5) CTMR protects reputed marks against a reduction

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of their distinctive quality by a later similar mark even where the later mark relates to dissimilar goods/services.

Although Article 8(5) CTMR only refers to conflicts between dissimilar goods/services, in its judgment of 09/01/2003, C-292/00, ‘Davidoff’ and judgment of 23/10/2003, C-408/01, ‘Adidas’, the Court held that this article also covers similar or identical goods/services.

The protection provided in Article 8(5) CTMR, therefore, acknowledges that the unrestrained use of a r eputed mark by third parties, even on di ssimilar goods, will eventually reduce the distinctive quality or uniqueness of that reputed mark. For example, if Rolls Royce were used on r estaurants, pants, candy, plastic pens, yard brushes etc. its distinctiveness would eventually be dispersed and its special hold upon the public would be r educed – even in relation to cars for which it is reputed. Consequently, the Rolls Royce mark’s ability to identify the goods/services for which it is registered and used as coming from its proprietor would be weakened in the sense that consumers of the goods for which the reputed mark is protected and reputed will be less inclined to associate it immediately with the owner who has built up the trade mark’s reputation. This is because, for those consumers, the mark now has several or many ‘other’ associations where it previously had one.

Relevant consumer

Detriment to the distinctive character of the earlier reputed mark must be assessed by reference to the average consumers of the goods and services for which that mark is registered, who are reasonably well informed and r easonably observant and circumspect (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 35).

The assessment of detriment to distinctiveness

Detriment to the distinctiveness of the earlier reputed mark occurs where use of a later similar mark reduces the distinctive quality of the earlier reputed mark. However, this cannot be found to occur merely because the earlier mark has a reputation and is identical with or similar to the mark applied for – such an appr oach would apply an automatic and indiscriminate finding of likelihood of dilution against all marks that are similar to reputed trade marks and would negate the requirement of proving detriment.

The Court held in ‘Intel’ that Article 4(4)(a) TMD (the equivalent to Article 8(5) CTMR) must be interpreted as meaning that proof that the use of the later mark would be detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour’ of the average consumer of the goods/services for which the earlier mark was registered, or a serious likelihood that such a change will occur in the future.

The Court has further elaborated on the concept of ‘change in the economic behaviour of the average consumers’ in its judgment of 14/11/2013 C-383/12P ‘Wolf head image’. It indicated that it is an objective condition which cannot be deduced solely from subjective elements such as consumer’s perceptions. The standard of proof is higher. Therefore, in order to find a detriment or risk of detriment to the distinctiveness of the earlier trade mark, the mere fact that consumers note the presence of a ne w sign similar to an earlier sign is not sufficient of itself (paras. 35-40).

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Whilst the opponent does not need to submit evidence of actual detriment, it must convince the Office by adducing evidence of a serious future risk – which is not merely hypothetical – of detriment. The opponent may do t his by submitting evidence that proves a l ikelihood of detriment on t he basis of logical deductions made from an analysis of the probabilities (and not mere suppositions) and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (see judgment of 16/04/2008, T-181/05, ‘Citi’, para. 78 as cited in judgment of 22/05/2012, T-570/10, ‘Wolf head image’, para. 52 and confirmed in the appeal by judgment of 14/11/2013, C-383/12P, paras. 42-43).

First use

Detriment to the distinctive character is characterised by an ‘avalanche effect’, meaning that the first use of a similar mark in a distinct market may not, in itself, dilute the identity or ‘uniqueness’ of the reputed mark but, over time, this would be the result because this first use may trigger further acts of use by different operators, thus leading to its dilution or detriment to its distinctive character.

The Court has held that the first use of an identical or similar mark may suffice to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 75). In opposition proceedings before the Office, use of the contested sign may not have occurred at all. In this regard, the analysis that the Office carries out assumes that the future use of the contested sign, even if it were first use, may trigger further acts of use by different operators, thus leading to dilution by blurring. As seen above, the wording of Article 8(5) CTMR provides for this by stating that use of the applied-for mark without due c ause ‘would … be detrimental to the distinctiveness or repute of the earlier mark’.

Nevertheless, as set out above, the opponent bears the burden of showing that the actual or future use caused, or is likely to cause, detriment to the distinctiveness of the earlier reputed mark.

Inherent distinctiveness of the earlier mark

The Court has stated that ‘the more “unique” the earlier mark appears, the greater the likelihood that the use of a l ater identical or similar mark will be det rimental to its distinctive character’ (judgment of 27/11/2008, C-252/07 ‘Intel’ para. 74 and judgment of 28/10/2008, T-131/09 ‘Botumax’). Indeed, the earlier mark must possess an exclusive character in the sense that it should be associated by the consumers with a single source of origin – since it is only in this case that a l ikelihood of detriment to distinctiveness may be envisaged. If the same sign, or a variation thereof, is already in use in connection with a range of different goods, there can be no immediate link with any of the goods it distinguishes and, thus, there will be little or no r oom for further dilution.

Accordingly, ‘… the risk of dilution appears, in principle, to be lower if the earlier mark consists of a t erm which, because of a meaning inherent in it, is very common and frequently used, irrespective of the earlier mark consisting of the term at issue. In such

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a case, re-use of the term in question by the contested trade mark is less likely to result in a dilution of the earlier mark’ (judgment of 22/03/2007, T-215/03, ‘VIPS’, para. 38).

If, therefore, the mark is suggestive of a characteristic shared by a w ide range of goods, the consumer is more likely to associate it with the specific feature of the product that it alludes to rather than with another mark.

In its judgment of 25/05/2005, T-67/04, ‘Spa-Finders’, the General Court confirmed the finding that the use of the mark SPA-FINDERS for publications and travel agency services would neither blur the distinctiveness, nor tarnish the reputation, of the mark SPA for mineral water: The term ‘spa’ in SPA-FINDERS may be used otherwise than in a trade mark context since it ‘is frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as hammams or saunas, [and consequently] the risk of detriment to the distinctive character of the mark SPA seems to be limited’ (para. 44).

Thus, if the applicant shows that the earlier sign or the element that gives rise to similarity is commonplace and i s already used by different undertakings in various sectors of the market, it may successfully refute the existence of a likelihood of dilution because it will be difficult to accept that the attractiveness of the earlier mark risks being diluted if it is not particularly unique.

Cases on dilution by blurring

Dilution established

Earlier reputed sign CTM application Case No

BOTOX BOTUMAX

T-131/09Reputed for pharmaceuticals for the treatment of wrinkles

Cosmetics, pharmaceuticals, and other health-related goods, and printed matters

‘However, in the present case, the word element “botox” has no inherent meaning, but is a fanciful term with which the public will be faced only in relation to the goods covered by the widely known earlier trade mark. Consequently, the use of that word element or a similar word element by another trade mark registered for goods which may concern the general public will unquestionably result in the dilution of the distinctive character of the widely known earlier trade mark’ (para. 99).

‘That is the position with regard, first, to the cosmetics and pharmaceutical preparations in Classes 3 and 5 and, secondly, to the goods in Class 16 covered by the earlier marks, which include magazines or journals, the distribution of which may be widespread. The risk that the use of an identical or similar trade mark would be d etrimental to the distinctive character of a widely known earlier trade mark is greater where that other mark will be used in respect of goods intended for a wide public’ (para. 100).

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Guidelines for Examination in the Office, Part C, Opposition Page 60

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Dilution denied

Earlier reputed sign CTM application Case No

VIPS VIPS T-215/03Reputed for fast food restaurant

chain in Class 42 Computer programming for hotel services in Class 42

‘So far as concerns, first, detriment to the distinctive character of the earlier mark by the use without due cause of the mark applied for, that detriment can occur where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used (SPA-FINDERS, paragraph 34 above, paragraph 43). That risk thus refers to the “dilution” or “gradual whittling away” of the earlier mark through the dispersion of its identity and its hold upon the public mind (Opinion of Advocate General Jacobs in Adidas-Salomon and Adidas-Benelux, paragraph 36 above, point 37)’ (para. 37).

‘As far as concerns, first, the risk that the use of the mark applied for would be det rimental to the distinctive character of the earlier mark, in other words the risk of “dilution” and “gradual whittling away” of that mark, as explained in paragraphs 37 and 38 above, it must be pointed out that the term “VIPS” is the plural form, in English, of the abbreviation VIP (“Very Important Person”), which is widely and frequently used both internationally and nationally to describe famous personalities. In those circumstances, the risk that the use of the mark applied for would be detrimental to the distinctive character of the earlier mark is limited’ (para. 62).

‘That same risk is also even less probable in the present case as the mark applied for covers the services “Computer programming relating to hotel services, restaurants, cafés”, which are directed at a special and necessarily more limited public, namely the owners of those establishments. The consequence is that the mark applied for, if registration is allowed, will probably be known, through use, only by that relatively limited public, a factor which certainly reduces the risk of dilution or gradual whittling away of the earlier mark through the dispersion of its identity and its hold upon the public mind’ (para. 63).

Earlier reputed sign CTM application Case No

SPA SPA-FINDERS

T-67/04Reputed for mineral waters in Class 32

Printed publications including catalogues, magazines, newsletters in Class 16, Travel agency in Class 39

‘In the present case, the Court finds that the applicant does not put forward any evidence to support the conclusion that there is a risk of detriment to the distinctive character of the mark SPA by the use of the mark SPA-FINDERS. The applicant stresses the alleged immediate link which the public will establish between SPA and S PA-FINDERS. It infers from that link that there is detriment to the distinctive character. As the applicant acknowledged at the hearing, the existence of such a link is not sufficient to demonstrate the risk of detriment to the distinctive character. The Court notes, moreover, that since the term “spa” is frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as hammams or saunas, the risk of detriment to the distinctive character of the mark SPA seems to be limited’ (para. 44).

3.4.3.3 Detriment to repute

The nature of the injury

The final type of damage under Article 8(5) CTMR concerns harming the earlier mark by way of detriment to its repute. It can be seen as a step beyond blurring in that the mark is not merely weakened but actually degraded by the link which the public makes with the later mark. Detriment to repute, also often referred to as ‘dilution by tarnishing’ or simply as ‘tarnishing’, relates to situations where use of the contested mark without due cause is likely to devalue the image or the prestige that a mark with reputation has acquired among the public.

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The reputation of the earlier trade mark may be tainted or debased in this way, either when it is reproduced in an obscene, degrading or inappropriate context, or in a context which is not inherently unpleasant but which proves to be incompatible with a particular image the earlier trade mark has acquired in the eyes of the public, due t o the promotional efforts of its owner. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark (judgment of 18/06/2009, C-487/07, ‘L’Oréal’, para. 40). For example, if a reputed mark for gin were used by a third party on liquid detergent, this would reverberate negatively on the reputed mark in a way that makes it less attractive.

In short, tarnishment occurs where there is an association between the earlier reputed mark, either at the level of signs or at the level of goods, which is injurious to the earlier trade mark’s repute.

Relevant consumer

As with dilution by blurring, detriment to the reputation of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and r easonably observant and circumspect (judgment of 27/11/2008, C-252/07 ‘Intel’, para. 35 and judgment of 07/12/2010, T-59/08, ‘Nimei La Perla Modern Classic’, para. 35).

The assessment of tarnishment

In order to establish detriment to the repute of an earlier mark, the mere existence of a connection in the mind of the consumer between the marks is neither sufficient nor determinative. Such a connection must certainly exist, but, in addition, the goods/services covered by the later mark must provoke the kind of negative or detrimental impact set out below when associated with the reputed mark.

Tarnishment occurs most frequently where the reputed mark is linked to goods which evoke undesirable or questionable mental associations which conflict with the associations or image generated by legitimate use of the reputed trade mark by its proprietor (decision of 12/03/2012, R 297/2011-5, ‘KAPPA’, para. 36).

Therefore, to prove tarnishment, the opponent must show that use of the applicant’s trade mark would prompt inappropriate or negative mental associations with the earlier trade mark, or associations conflicting with the image it has acquired in the market (decision of 23/11/2010, R 240/2004-2, ‘WATERFORD’, para. 89).

For example, if a mark that is associated in the minds of the public with an image of health, dynamism and y outh is used for tobacco products, the negative connotation conveyed by the latter would contrast strikingly with the image of the former (see further examples below). For tarnishment to occur, therefore, there must be s ome characteristic or qualities of the goods/services on which the contested mark is used that are potentially detrimental to the reputation of the earlier mark (judgment of 22/03/2007, T-215/03, ‘VIPS’, para. 67).

Trade Marks with Reputation, Article 8(5) CTMR

Guidelines for Examination in the Office, Part C, Opposition Page 62

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Earlier reputed sign CTM application Case No

WATERFORD

R 0240/2004-2

Reputed for crystal products, including glassware in Class 21

Alcoholic beverages, namely wines produced in the Stellenbosch district, South Africa in Class 33

‘Tarnishment or debasement of a t rade mark’s image through association with something inappropriate may happen when the trade mark is used, on the one hand, in an unpleasant, obscene or degrading context or, on t he other hand, in a context which is not inherently unpleasant but which proves to be incompatible with the trade mark’s image. This may be the case when the reputed mark might be linked with goods of poor quality or which evoke undesirable or questionable mental associations which conflict with the associations or image generated by legitimate use of the reputed trade mark by its proprietor, or when the reputed mark is linked to goods which are incompatible with the quality and prestige associated with that mark, even though it is not a matter of inappropriate use of the mark itself, or, eventually, when the reputed mark’s verbal or figurative element is amended or altered in a negative way’ (para. 88).

Frequently opponents argue that the goods/services of the applicant are of inferior quality or that the opponent cannot control the quality of such goods/services. The Office does not accept such an argument, per se, as a means of demonstrating detriment. Proceedings before the Office do not provide for assessing the quality of goods and services which, apart from being highly subjective, would not be feasible in cases where the goods and s ervices are not identical or in situations where the contested sign has not yet been put to use.

Therefore, in assessing whether the use of the contested trade mark is likely to damage the reputation of the earlier trade mark, the Office can only consider the goods and services as indicated in the specification of each trade mark. Consequently, for the purposes of the analysis by the Office, the harmful effects of the use of the contested sign in connection with the goods and services applied for must derive from the nature and usual characteristics of the goods at issue in general, not their quality in particular instances. This approach does not leave the opponent without protection because, in any event, where a later mark is used on low quality goods/services in a manner that calls to mind an earlier reputed mark, this would normally take unfair advantage of the distinctive character or the repute of the earlier trade mark or be detrimental to its distinctiveness.

Trade Marks with Reputation, Article 8(5) CTMR

Guidelines for Examination in the Office, Part C, Opposition Page 63

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Cases on dilution by tarnishing

Tarnishment established

Earlier reputed sign CTM application Case No

KAPPA

KAPPA R 0297/2011-5

Reputed for sports clothing and footwear

tobacco products, cigarettes, cigars amongst others

The contested application was filed for tobacco and related goods in Class 34. Smoking tobacco is universally considered to be an extremely unhealthy habit. For this reason, the use of the sign ‘KAPPA’ for tobacco and related goods is likely to prompt negative mental associations with the respondent’s earlier marks or associations conflicting with and detrimental to their image of a healthy lifestyle (para. 38).

Earlier reputed sign CTM application Case No

R 0417/2008-1

Reputed for mineral waters

Scouring and polishing preparations and substances; pot pourri; incense; incense sticks; room fragrances and articles for perfuming rooms

The pleasant notions conveyed generally by mineral water do not mix seamlessly with detergents and scouring preparations. Use of marks that contain the word SPA for goods conveying such different connotations is likely to damage, or tarnish, the distinctive character of the earlier mark (para. 101).

‘Mineral water is not pleasantly associated by most consumers with incense or pots pourris. The use, in order to distinguish fragrances and incense, of a mark containing a word (SPA) that Belgian consumers strongly associate to bottled drinking water is therefore likely to damage the attractive and suggestive power that the brand, according to the evidence, currently enjoys’ (para. 103).

Trade Marks with Reputation, Article 8(5) CTMR

Guidelines for Examination in the Office, Part C, Opposition Page 64

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Earlier reputed sign CTM application Case No

R 2124/2010-1

Reputed for goods in Classes 18 and 25

Scientific, nautical, surveying, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; amongst others.

The opponent demonstrated that the prestigious image of its trade marks is linked to the traditional manufacturing method of its fine leather goods, which are handmade by master craftsmen who work only with top-quality raw materials. It is this image of luxury, glamour and exclusivity, combined with the exceptional quality of the product that the opponent has always striven to convey to the public, as the evidence adduced testifies. In fact, this image would be quite incompatible with goods of a strongly industrial and technological nature, such as electric meters, scientific microscopes, batteries, supermarket cash registers, fire-extinguishing apparatus or other instruments, for which the applicant intends to use its trade mark (para. 28).

What would be detrimental to the image of its trade marks, which the opponent has carefully fostered for decades, is the use of a trade mark that recalls its own and is applied to goods characterised, in the public’s perception, by a significant technological content (whereas a fine-leather article is rarely associated with technology) or as having an industrial origin (whereas fine leather goods are traditionally associated with craftsmanship) (para. 29).

The use of a trade mark that is practically identical to a trade mark that the public has come to perceive as synonymous with fine leather goods of excellent manufacture for technical apparatus or electrical tools of all kinds will diminish its attraction, that is, its reputation, amongst the public who knows and values the earlier trade marks (para. 30).

Earlier reputed sign CTM application Case No

EMILIO PUCCI

T-373/09 (cases R 770/2008-2 and

R 826/2008-2) Reputed for clothing and footwear for women

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring

and abrasive preparations; (abrasive preparations) soaps;

perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 21: Materials for cleaning purposes and steelwool

It its decisions of R 0770/2008-2 and R 0826/2008-2 it is stated that the risk of detriment to repute can occur where the goods and services covered by the mark applied for have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the mark applied for. The General Court confirmed the Board’s finding, adding that due to the great similarity between the signs at issue, the strong distinctive character of the Italian mark and its notoriety in the Italian market, it can be concluded that that there is a link between the signs in conflict, a link which could damage the idea of exclusivity, luxury and hi gh quality and therefore be a detriment to the notoriety of the Italian mark (para. 68).

Trade Marks with Reputation, Article 8(5) CTMR

Guidelines for Examination in the Office, Part C, Opposition Page 65

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Tarnishment denied

Earlier reputed sign CTM application Case No

T-192/09

Reputed for organisation of sports competitions Class 9

The Court noted that the opponent had not demonstrated any risk of injury to the reputation of the earlier marks, since it did not indicate how the attractiveness of the earlier marks would be diminished by the use of the contested mark on the contested goods. Specifically, it did not allege that the contested goods have any characteristic or quality that could have a negative influence on the image of the earlier marks (para. 68).

Earlier reputed sign CTM application Case No

SPA SPA-FINDERS

T-67/04Reputed for mineral waters in Class 32

Printed publications including catalogues, magazines, newsletters in Class 16, Travel agency in Class 39

‘This detriment is made out where the goods for which the mark applied for is used appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished’ (para. 46).